Patent Protection Abroad: Getting Your Ducks in a Row Before Filing Across the Pond
If there is any prospect of use, manufacture, or sale of inventive technology outside the United States (OUS), OUS filings should be considered. Even without such prospects, OUS filings can add value to an intellectual property portfolio. Here are some considerations.
September 10, 2020 at 01:30 PM
9 minute read
For many individuals or businesses seeking to protect their technology, filing a patent application in the United States alone will suffice. However, if there is any prospect of use, manufacture, or sale of the inventive technology outside the United States (OUS), OUS filings should be considered. Even without such prospects, OUS filings can add value to an intellectual property portfolio by making the portfolio more attractive to potential acquirers and investors who may want the option to protect OUS markets. Adding OUS patent assets can also increase the portfolio's valuation and act as security interests for loans to grow a business.
Choosing OUS jurisdictions for filing should be based on where the technology is likely to be made, used, or offered for sale by patent applicants or their competitors. In making a decision, the location of manufacturers in the supply chain and ports of entry where title transfers may take place should be considered. Agreements, such as those licensing the inventive technology, may also indicate where OUS filings are advisable or required.
Of course, a major consideration in filing abroad is cost, which can be significant and ongoing even after patents are procured. Prosecution costs, maintenance and annuity fees, and other extraneous costs, such as translation fees, can make obtaining and maintaining an international patent portfolio expensive. Another consideration is whether the benefits of keeping the technology undisclosed for some period of time outweigh potential OUS patent protection. In the US, patent applications may be kept secret by request until issued as a patent, but this right must be forfeited to file abroad such that the US application eventually publishes. If these considerations weigh in favor of filing abroad, then various filing options are available, each with certain benefits and drawbacks.
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