procedures, pitfalls and costs: best practices for securing foreign patents

Procedures, Pitfalls and Costs:

Best Practices for Securing

Foreign Patents

Panel: Bill Bunker and Brenden Gingrich

Moderator: Rose Thiessen

The recipient may only view this work. No other right or license is granted.

2 © 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved.

Foreign Patent Filing Strategies

• What?

• Where?

• When?

• Why?

• How Much $$$?


Should I Foreign File?

• Case-by-case review

• Nature of each case determines patentability

• How patentability is assessed varies by country

• Perceived value/effort relationship may determine whether to proceed


Reasons to Consider Filing in Foreign Countries

• Stop your competitors from supplying the foreign market (supply yourself or through a foreign partner)

• License IP rights to a foreign company

• Attract investment from a foreign partner or the foreign government

• Increase the value of your IP portfolio


Consider Your Markets

• Are you planning to provide products or services to the foreign market either directly or through a distributor?

• Are you looking for a collaborative partnership with a foreign company to provide products or services to the foreign market?

• Are you seeking investment in the foreign country?


Consider Your Markets

• Markets outside the United States

– Can you tolerate a foreign competitor supplying unprotected markets?

• United States Market

– Are you satisfied with patent protection only in the United States?

• If so, you might consider requesting that the United States application not be published until its issuance

7 © 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 7

Foreign Filing Timeline and Expenses

Provisional

Patent App.

Patent

Search

Non-Provisional

Patent App.

Patent Cooperation

Treaty (PCT) Filing

National Phase

(Foreign Patent

App. Filings)

Conception

Of Invention

1 year

18 months


Consider Your Budget

• Plan realistically

– Obtaining a patent in some foreign jurisdictions can be expensive

• Official fees paid to the foreign government

• Professional fees paid to a foreign patent attorney

• Cost of translating all documents submitted to the foreign patent office

• Cost of annuities after patent issues


Countries

• European Patent Office (EPO)

• Japan

• China

• Argentina; Brazil; Chile; Mexico

• Russia

• India

• Canada

• Australia


Cost Considerations

• Serial filings generally not preferred in Europe (time limits for filing divisionals, high costs associated with validation of granted EP patent)

• Filing in U.S., Europe, and Japan will cover bulk of the global market

• Carefully consider whether to file in other countries (Canada, Australia, Korea, Taiwan, China, Russia, or other markets)


Cut Losses When Appropriate

• Annual review of portfolio to identify applications/patents to abandon, donate, monetize, license

– Change business direction

– Introduction of new products

– Old products off the market

– Unfavorable prosecution

– Litigation

– Possibilities for enforcing patent against competitor, value of patent/application to discourage competition


Patentable Subject Matter

• Draft specifications that encompass all categories of patentable subject matter

– Compositions of matter

– Apparatus

– Systems

– Components

– Methods of making (compositions, apparatus)

– Methods of using (compositions, apparatus)


Possible Subject Matter Exclusions

• Naturally occurring substances

• Methods of surgery, therapy and diagnosis

• Animal and Plant Varieties

• Computer Programs


Dealing with Excluded Subject Matter

• If your technology falls into an excluded area, see an experienced patent attorney

– There are often ways to obtain patent protection for excluded subject matter through clever drafting of the specification and claims


Direct National Phase Filing

• File first application in a foreign country

– Fastest way to an issued patent

– You will likely need to obtain a foreign filing license from your country of residence before filing

– The application may need to be submitted in a foreign language


Paris Convention Filing

• Many countries are a party to the Paris Convention

– A foreign patent application can claim priority to the first-filed patent application disclosing the invention

• The first-filed application must have been filed in a country that is a party to the Paris Convention

• The foreign application must be filed within one year of the first-filed application that discloses the invention


PCT Filing

• Many countries are PCT member nations

– A PCT application designating a foreign country provides the most flexibility in the timing of filing the national application

– Can delay the cost of national phase entry for up to 30 months

– Can enter national phase early if time is of the essence

– Keep the number of claims reasonable if planning on entering the national phase, as claim fees may be based on the number of claims originally presented in the international application


• File utility applications directly in all countries of interest

• Take advantage of accelerated examination procedures

• Consider parallel filings within a particular country

Aggressive Filing Strategy


Defer Costs / Delay Filing Decisions

• File U.S. provisional application, then

• File U.S. utility application only or

• File PCT application designating all states

• Consider serial filing strategy

• Consider mechanisms for delay of grant


When must I decide whether to foreign file?

• Review/decision at same time as evaluation for US filing, and reevaluate at later stages (e.g., due date for entry into national stage from PCT, receipt of negative examination report)

• File US first to establish priority, or simultaneously with foreign filings?

• Different drafting requirements for foreign filings

• Foreign bar dates and grace periods

• Delay examination of foreign application?

• Take advantage of Patent Prosecution Highway (PPH) or expedited examination provisions

Rose Thiessen [email protected]

858.707.4213

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