Fundamentals of Protecting Patents Overseas

The territorial nature of patent protection necessitates considering foreign patent rights and a benefit-cost analysis of foreign patent filing options. Such benefits as foreign market exclusivity, foreign-based licensing revenue and cross-licensing opportunities in foreign countries need to be balanced against costs, time and the effort required to address foreign patent laws. Particular consideration needs to be given to strict timing requirements imposed by individual patent offices.

Companies often prefer to defer specific country decisions by filing a single international Patent Cooperation Treaty (PCT) patent application. The PCT patent application is useful to delay the need to file patent applications in most industrialized countries for up to 30 or 31 months from a respective priority date.

Since May 2015, patent offices around the world, including in the United States, Europe, Korea and Japan, have been accepting standardized international design applications (IDAs) that cover protection for ornamental or aesthetic aspects of the shape of an article.

Other alternatives to consider are filing a single foreign patent application in a regional patent office that covers a number of individual countries, and tapping a recent development, commonly known as the “unitary patent,” that will provide for a new type of patent that has a unitary effect in the European Union.

A strategic view of your company’s current intellectual property assets, present and future business objectives, and current and potential competition, should include a close look at options for foreign patent protection and enforceability.