Foreign filing and effective use of the Patent Cooperation Treaty

While an increasing number of Patent Prosecution Highway (PPH) cooperation programmes are being established between different patent offices, enabling patent applicants to request fast-track examination procedures, many companies continue to face challenges in finding the right balance between cost and quality in the foreign filing process. This paper analyses companies’ options and considers some of the issues raised by foreign prosecution.

What are the challenges when seeking to obtain patent protection in different countries?

When seeking to protect their inventions overseas, companies should ask themselves a series of questions:

  • In what countries is it worthwhile obtaining protection?
  • What schemes will be used for filing (eg, individual filing in each country, regional application, Patent Cooperation Treaty (PCT))?
  • What is the financial commitment?
  • How can the highest level of protection be obtained at the lowest cost?

The costs associated with foreign filing tend to be quite high and unpredictable. For companies with a limited budget for patents, such as start-ups, certain strategies can be implemented to help manage the financial burden of foreign filing. One such strategy is delaying costs (generally for up to 30 months after the first priority filing date) and using the time gained to assess the probability of commercial success of the invention in particular countries before filing national-phase patent applications in those countries under the PCT framework.

The tedious formalities which must be completed, the high number of invoices and inefficiencies in workflows make foreign filing a time-consuming process. The challenge is to find a way to manage the process more intelligently and optimise communication in order to obtain better results in a shorter time.

What are some of the trends in foreign filing in 2014?

The number of applications filed overseas continues to increase as a consequence of globalisation. At the same time, in countries that are experiencing economic development (eg, South Korea, China and Brazil), the number of initial national filings is increasing, which in turn will lead to more filings abroad.

On the other hand, IP service providers are beginning to operate in the area of foreign filing, offering services such as national phase entry after PCT and European patent validations.

A better approach is to focus not just on filing, but rather on the complete process, from filing through prosecution to grant. The question to ask is: what is the best way to deliver both filing and the final result – the granted patent – to applicants?

This article first appeared in the IAM Yearbook: Building IP value in the 21st century, a supplement to Intellectual Asset Management (IAM), published by The IP Media Group. To view the guide in full, please go to www.iam-magazine.com