2nd August 2012
inovia Advice: Cost-Effective International Patenting Systems
Foreign patent filing has become a priority for many applicants and they are seeking ways to maximize their overseas protection while operating on limited budgets. So how can you 1) obtain foreign patent protection and 2) do it in the most cost-effective way possible?
Foreign Patents via the PCT
Filing via the Patent Cooperation Treaty (PCT) is the most common method of obtaining international patent protection. In fact, a record number of PCT applications, over 181,000, were filed in 2011.
You typically start by filing a “priority” patent application in your home country. A PCT application can then be filed up to 12 months from the priority application’s filing date (“priority date”) and reserves your right to file into the 145 PCT member countries. 30 months (or 31 months for certain countries) after the priority date, the PCT application needs to enter the national stage. This involves filing separate applications into the patent offices where you are seeking protection. Depending on the country, your PCT application may need to be translated into the destination country’s official language. Once your PCT application is filed, the patent office will examine the application to see if it meets the requirements for patentability.
7 Tips for Controlling Costs
Foreign filing costs can escalate quickly, especially if you are pursuing widespread protection. Here are 7 tips that can help you minimize costs:
1) File a PCT application instead of direct filing. If you require broader protection or if you’re not sure which countries you want protection in and want to keep your options open, a PCT application can help you maximize protection while controlling costs.
2) Select countries intelligently. If you have a good idea where your technology will be made or used, you can tailor your IP strategy to file into only those countries that matter.
3) Ace the patent application process. Knowing when deadlines are approaching and making sure to provide instructions in advance will help you avoid taking unnecessary time extensions or incurring rush charges. Some jurisdictions (e.g. Europe) also charge fees for excess claims over a certain number, so you can reduce claims to avoid these fees.
4) Choose a foreign filing service that’s on your side. Many steps of the foreign filing process, such as PCT national stage filing and European validation, are largely administrative and can be outsourced to a specialist provider.
5) Batch file to create economies of scale. If you have multiple filings due in a given month or quarter, do a batch filing to maximize efficiency and minimize costs.
6) Consolidate providers. I’ve seen applicants work with numerous law firms within a single jurisdiction. While there can be valid reasons for this, it does dilute buying power. Consolidate the number of firms you work with and leverage the increased volume to negotiate lower fees.
7) Bring tasks in-house, or outsource! It may be more cost-effective to pay the salary for an in-house patent attorney rather than retain outside counsel. Or consider outsourcing certain services, such as foreign filing or annuity payments, to reduce costs.
These are just some things to consider when you’re filing your PCT application internationally. For more information on the foreign filing process, visit our website www.inovia.com or contact us at mail@inovia.com.