Foreign prosecution is a critical—and complex—component of a successful patent strategy. Navigating past the pitfalls to efficiently and effectively secure global IP rights is an easier-said-than-done challenge for innovative companies and their outside counsel.

From the onset of an overall patent strategy, savvy IP strategists encourage factoring in foreign prosecution considerations. For starters, novelty requirements in many foreign jurisdictions mean that applicants could inadvertently foreclose the possibility of foreign patent protection if they publicly disclose their invention prior to filing. Rules around novelty and public disclosure vary by country and can be unlike the rules in the US.

Secondly, many astute companies file internationally under the wide-ranging Patent Cooperation Treaty, which enables a delay in decision-making around foreign patent office selection, while maintaining broad, interim coverage in eligible jurisdictions. Doing so through a regional patent office, such as the European Patent Office (EPO), can have a similar effect. In other scenarios, companies will file directly into foreign jurisdictions when it aligns with their priorities as to the speed and cost of patent protection. In any event, the “where” and “how” of a foreign prosecution strategy are intertwined.

Identifying the new invention and the markets it is entering

Where to secure IP rights necessarily depends on what is being claimed by the patent. Frequently, big picture questions about production and distribution take centre-stage—such as where will the invention be made, is it a finished product for final consumption or a component (or method) used in production?

Factors include the physical features of the invention, its size, portability, and the quantity of materials involved in its production. All of these can sway and shape the ultimate decision of where to file abroad.

Seeking global patent rights for a therapeutic looks different than doing so for a small medical device. Beyond identifying potential markets for a new invention, companies are tasked with identifying its downstream uses and considering the end-to-end product lifecycle.

A prudent decision-making process also asks the following: if the size of the company doubles, where might production processes take place in the future and what new markets might it look to next?

Comparing and contrasting with competitors

IP strategists wisely consider competitors’ global patent filing strategies. Marginal differences in the products and services they provide, economies of scale and, of course, the novelty of the invention itself require that competitors’ global patent footprint remain guidance, rather than a strict template.

An invention’s distinguishing characteristics—the improvements it offers its users over and above comparable products or methodologies—may present opportunities for competitors even while it creates value for the innovator. For example, an applicant’s new and more efficient method for producing asphalt might incorporate an as-yet unused material in the industry. The applicant would then need to consider not only where its competitors might currently be operating, but where those same competitors might open up new production centres with easy access to this material, should they attempt to infringe on the patent.

Consideration of competitors’ behaviour matters for another reason: the potential for a future merger or acquisition. A software-as-a-service (SaaS) venture, for example, would likely be interested in actively preserving its value as an enterprise in the eyes of larger industry participants. As a small company, it might hesitate to nationalise a patent into countries with cumbersome regulations, higher fees, or bad reputations for enforcement.

That said, enhancing the company’s prospects for a later acquisition by a competitor who is interested in those markets could motivate the foreign filings—and for good reason. If the window of opportunity for securing those foreign patents expire, the company may be of less value to future potential buyers.

Barriers to procurement and enforcement

Logistical and financial hurdles abound in the context of foreign prosecution. Furthermore, subject matter eligibility can vary by jurisdiction, as can the strength of a patent once granted.

For several reasons, companies often file into the IP5 jurisdictions. The five largest patent offices in the world include the US, the EPO, Japan, Korea, and China, all of which attract foreign applicants across a range of technology verticals. The outsized role of these places as production hubs and consumer markets have secured their perch atop many companies’ lists of where to file.

Of course, a coherent foreign prosecution strategy is predicated on the details of the applicant’s invention, industry dynamics, and wider business objectives. If the patent is for a flagship product, for example, then it may be worth investing the resources to nationalise its patent more broadly and even into a country with uncertain enforcement protections.

On the other hand, if the industry has unusually rapid technology turnover and it might be expected that—following the years it often takes to be granted a foreign patent—the invention will become outmoded, it may be in the best interest of the company to forgo prosecution in jurisdictions offering dubious protection.

Summary

At the core of an actionable, effective plan for global patent protection is the premise that IP strategists maintain an intimate understanding of the new invention, as well as its place in a cycle of production and distribution, and the disruptive qualities it introduces to the industry.

Even the simple details—is the invention bigger or smaller than a breadbox?—are important to the analysis that undergirds a cogent foreign filing strategy.

While certain jurisdictions continue to dominate the list of where innovators seek patent rights, many other places are improving the reliability of their IP regimes, growing their domestic markets, and integrating with the global innovation landscape. Forward-thinking companies can steer through the complexity and seize clear opportunities afforded by global patent protection.

Ethan LaFrance is a founder at Sun IP. He can be contacted at: elafrance@sunip.com

Image: Shutterstock.com / Chess Ocampo