Learn the Basics: Don't be Afraid of Foreign Filing
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Transcript of Learn the Basics: Don't be Afraid of Foreign Filing
The United Statesmakes up only 23% ofthe world's economy.
Foreign FilingWhy?
1 2 3 4
23% 75%
Each country isseparate. A patent isonly valid within that
country
Several strategic filingscan cover 75% of the
world’s GDP.
There are other big,valuable markets.Leverage them.
Domestic Validity Strategic Value
TimelineForeign Filing
Approaches
Month 1 Month 12 Month 30/31
Initial Application
PCT Application
EuropeanPatent
Applications
Applicationsin Other
Countries
Consider Where It's ValuableWhere to File?
“Make, useor sell” in
that market
Market size &profitability
De factocross-border
protection
Location ofcompetitors
Enforceability
Interest ofpotential
licensees &/oracquirers
Translations
Initial local agent fees
Local agent fees for prosecution
Government fees
Annuity fees
Typical Costs
Office actions
Filing
Examination
Publications
Search
Grant
Be ready in advance of month 12 or 30.
Translations
Assignments
Foreign associates
Remember...take advantage of deferrals whenavailable!
Total Cost vs. Quality
Qua
lity
Cost
Number of people reviewing office actions.
Diminishing return on quality as youadd more people to review office actions.
Find a Balance
Quality Cost
Certain claims (not any claims)
Granted(if possible)
In a chosen country
For a reasonable price
EVERYTHING ELSE IS NONESSENTIAL!
#1CLEAR THE TITLE EARLYForeign Filing
Best Practices
The application needs to beproperly in the name of theapplicant, not the inventor(s),before national phase.
You should get the assignmentsprior to the first filing.
#2
PLAN AHEAD Foreign Filing Best Practices
Start early to avoid last minutepanics and ensure qualitythroughout the process.
#3
FOCUSForeign Filing Best Practices
Focus on the keyclaims and proceedwith the applicationin a timely manner.
You can increase patentportfolio value with theright strategy.
Remember to first examine the why,where, and when to file; balance thequality vs. cost; and follow bestpractices.
www.dennemeyer.com
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