International Patent Acquisition: 5 Tactics for Building a Cross-Border Patent Asset Base

International Patent Acquisition: 5 Tactics for Building a Cross-Border Patent Asset Base

Protecting your invention on a global scale: What's the smartest approach? When you've got a revolutionary product or cutting-edge technology with a potential worldwide market, you might think that filing patents across every country is your best bet. But this isn't always the case. Your patent attorney might advise you to file patents worldwide, but it's essential to assess the patentability of your idea in each market before you put your money into a global patent spree.

Why? Because without proper research, you could end up overspending on patent applications and enforcement where your market isn't, resulting in wasted resources. Companies often make this mistake, focusing on capital-intensive patent filing exercises without doing adequate due diligence.

So, before diving headfirst into foreign patent filings, consider these tips:

1. Validate your business needsIs there a strong business need to protect your innovation in particular countries? Are there markets you want to secure a presence in? Do you see potential profitability in those countries? If you're unsure, consider a strategy that delays foreign patent filings as long as possible, giving you time to test your market first.

Don't forget about the Patent Cooperation Treaty (PCT), which allows you to hold international patent rights for most jurisdictions without committing for 30 months from your earliest priority date. This way, you can evaluate the commercial prospects of your innovation before making long-term commitments to the patent application process.

2. Align your patent strategy with your business modelYour business model plays a significant role in your patent strategy. For instance, if your company is working on AI technology and your business model depends on a country's population, focus on filing patents in countries like China and India. If your business model relies on per capita income, prioritize filing in European countries. Understanding your business goals and objectives helps you craft a more effective global patent portfolio strategy.

3. Reduce patent expenditureIt's vital to make informed decisions about where to invest your patent budget. For example, spending $70,000 on filing a patent in Japan may not be worth it when the legal system there is difficult to navigate, with a low likelihood of enforcing foreign patents against Japanese companies.

To optimize your patent budget, collaborate with experienced local law firms in the countries you plan to file. Ask for opinions on the likelihood of receiving a patent, end-to-end costs, patent strategy, and the practicality of enforcing patent rights. Don't overlook these valuable insights when creating your patent strategy.

4. Adapt the right strategyConsider the impact of patent density on your decision. If you're dealing with a dense market, like electronics or software technology, it's best to avoid filing abroad, as each patent has a relatively lower value. On the other hand, if the patent landscape is sparse, ensuring each patent secures a substantial value.

5. Prioritize strategic jurisdictionsA two-thirds market filing strategy can help identify which countries to focus on and which to avoid. For example, if two-thirds of your market is in the United States, Europe, China, India, and Indonesia, it'd make sense to pursue patent applications in these jurisdictions, as they'll cover the majority of worldwide revenue. Although the costs in these countries might be higher than in the United States, it'll still be less expensive than trying to file in a multitude of countries worldwide for a minor fraction of the market.

6. Keep unfriendly jurisdictions in mindSome jurisdictions, like New Zealand, India, and Europe, are unfriendly towards patents involving software and business methods. Be aware of your inventions' patentability in these countries before diving in.

7. Evaluate your business goalsUnderstanding your business objectives is essential when developing a robust foreign patent strategy. Whether it's using your international patent portfolio to get acquired, enforce patent rights against competitors, defend yourself, gain exclusive market access, or monetize your portfolio, tailor your foreign patent strategy accordingly.

8. Know your foreign patent filing optionsInstead of directly filing a patent in every country, consider using strategies like the Patent Cooperation Treaty (PCT) and the Paris Convention to delay substantial costs while you test your innovation in the market.

By carefully crafting your global patent portfolio strategy, you can secure your inventions' rights while maximizing your investment. And remember, seeking expert advice from patent professionals and leveraging their extensive knowledge can greatly support your IP strategy.

1. To ensure your patent filing budget is well-spent, it's crucial to evaluate the patentability of your idea in each market before committing to a global patent spree, as overspending on patent applications and enforcement without commercial prospects can lead to wasted resources.
2. Aligning your patent strategy with your business model is essential, as the success of AI technology, for example, may depend on a country's population, requiring focus on filing patents in places like China and India.
3. Reducing patent expenditure is vital, and this can be achieved through informed decisions, such as collaborating with local law firms for insights on the likelihood of receiving a patent, end-to-end costs, patent strategy, and the practicality of enforcing patent rights.
4. Depending on the patent density, it's best to avoid filing abroad in dense markets, as each patent has a relatively lower value, but file in sparse markets where each patent can secure a substantial value.
5. Adopting a two-thirds market filing strategy can help identify strategic jurisdictions, like the United States, Europe, China, India, and Indonesia, where a majority of your market resides, making it more cost-effective than filing patents in multiple countries worldwide for a minor fraction of the market.
6. Be aware that some jurisdictions, like New Zealand, India, and Europe, may be unfriendly towards patents involving software and business methods, so you should assess your inventions' patentability in these countries before making filing decisions.
7. It's essential to understand your business goals when developing a robust foreign patent strategy. Whether you want to use your international patent portfolio for acquiring companies, enforcing patent rights against competitors, defending yourself, gaining exclusive market access, or monetizing your portfolio, you should tailor your foreign patent strategy accordingly.
8. When developing a global patent portfolio strategy, also consider alternatives like the Patent Cooperation Treaty (PCT) and the Paris Convention to help delay substantial costs while testing your innovation in the market.

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