Ten Guidelines when Filing for International Patents | DCR Workforce Blog

Ten Guidelines when Filing for International Patents

US Patent Trade markWhen an organization owns an exciting invention, which needs protection under a patent, the sheer logistics of reviewing the level of protection available (in about 200 countries of the world) boggle the mind; even without the concerns about revealing one’s trade secret in the patent application process and the costs involved to get cover in the chosen countries.

The level of protection offered by a patent differs by country. For example, once a United States patent is granted, anyone that makes the patented product outside the United States and imports it into this country infringes on that patent. However, if the patented product never enters the United States, there is no infringement.

In the U.S. companies may apply for a design patent or a utility patent.  While the requirements for obtaining both patent types are similar, they differ in the cost to prepare and file, the term of protection, the level of rigor employed in evaluating the application, and the period of patent pending.  It is possible to exercise a choice and make a selection only when there is complete clarity about the organization’s business goals and global opportunities. It is necessary to also verify whether the countries in which the product would be marketed comply with the regulations and standards set by North American Free Trade Agreement (NAFTA) or the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS).

Keep these guidelines in mind when filing for patents:

  1. How significant is each region as a potential marketplace? Obtain patent cover only in countries which offer the maximum amount of prospects. Regions which offer less opportunity may be ignored due to their low promise of yield.
  2. Ensure the patentability of the invention in the region/country of choice.
  3. It is important not to lose ground to competitors in regions where they have presence. Patents force these competitors to obtain licenses to your invention.
  4. Keep an eye on emerging markets for revised patent laws and affiliations with NAFTA and TRIPS, particularly in countries who are known for poor enforcement of patent ownerships.
  5. It is necessary to consider the probable life span of the technology, as royalties may not prove to be adequate compensation for the prolonged certification process.
  6. Cover important markets and key features of the product instead of obtaining a lot of patents for smaller markets which present little or no threat.
  7. Verify if the invention has to be absolutely undisclosed.
  8. Try and bundle the patent with a technology transfer license to reduce some of the impact of taxes.
  9. Decide who the assignees are, as many countries issue patents in the name of an assignor rather than inventor.
  10. Understand the time period in which the patent comes up for public disclosure of its patent. If the patent contains a trade secret, it may be much easier to protect it by not filing for patent protection at all.

It is clear that the time and expense involved in obtaining a patent can always be minimized by assessing the potential of a market.  An in-depth knowledge of the patent laws of the different regions will go a long way to help in the process.

The content on this blog is for informational purposes only and cannot be construed as specific legal advice or as a substitute for competent legal advice. They reflect the opinions of DCR Workforce and may not reflect the opinions of any individual attorney. Do contact an attorney for advice specific to your issue or problem.
Lalita is a people/project manager with extensive experience in operations, HCM and training and development across industries like banking, education, business consulting, BPO and information technology. She believes in a dynamic approach to life and learning as change is the only constant.