Once a patent application has been drafted – covering the technical and legal aspects of securing IP rights in the patent-drafting phase – there remains the business aspect of deciding on the jurisdictions in which to seek protection. Determining an appropriate patent filing strategy has two main facets – cost and coverage. Intellectual property firms through an experienced patent attorney can provide valuable guidance in assessing the options. The ultimate filing strategy chosen should consider the regions of prominent and developing markets for your business activity as part of an overarching IP strategy.
It goes without saying that as the regional coverage for patent protection increases, so does the cost. There is no such thing as an international patent; there is only an international patent application process (commonly referred to as a PCT application) which allows the process to initiate through one application. However, at the end of the PCT process (30-31 months from the earliest priority date), one will have to enter what is referred to as the national or regional phase. During this stage, a patent application is submitted for the invention in each of the jurisdictions that one decides to pursue to obtain a patent in the US, EU, JP, or a patent in Israel, for example.
This means that the invention will be prosecuted by multiple examiners independently, which certainly compounds the costs. Another element to keep in mind in determining your filing strategy is that the process described above deals with any single invention that you are considering protecting. The issue should be viewed more broadly when dealing with a portfolio of inventions in the IP strategy that complement or enhance each other and your business offering. The budgeting and timing of patent-prosecution costs should be thoroughly discussed at the outset.
There are substantial differences in how different jurisdictions handle patent prosecution. Therefore, in many cases, a patent application should be modified or “customized” to the jurisdiction to which it is being submitted. As an example, in the area of software, it is commonly known that the EPO has more stringent requirements in establishing what is referred to as “technical effect” than the USPTO.
This will become evident during patent prosecution when an examiner issues an “office action” (OA) assessing the merits of the invention. The goal of the patent practitioner is to determine as quickly as possible the substantial issues that the examiner has raised, and to develop suitable amendments and supporting arguments to overcome the objections/rejections in the fewest OA/response cycles. This will also affect the costs incurred, as well as the time to receive a patent allowance or grant.
Furthermore, patent law is always changing; changes in the rules and law occur frequently. Case-law decisions can have enormous impact on a patent attorney’s decision regarding where to seek patent protection, and how to properly draft patent claims. Intellectual property firms are constantly updating their knowledge of patent law as it dynamically evolves.
FlashPoint IP, a leader among intellectual property firms, factors these wide-ranging aspects into the process of securing patent protection, whether in performing a patent search and patent analysis of the prior art, engaging in patent drafting of applications, selecting how and where to file a patent application, or prosecuting your claims to an invention to help you maximize value in an extensive array of practice areas. Our patent attorneys are adept at synthesizing the many facets needed to create a winning formula for your IP.
FPIP specializes in obtaining a patent in Israel, US, and EU jurisdictions – filing patent applications on behalf of its clients directly before the USPTO, EPO, WIPO, and ILPO, and worldwide via our network of professional associates. Contact us to discuss your options regarding IP strategy and positioning, and how best to secure your rights.
