Developing a Global Patent Portfolio

• Citation: Vol. 45 No. 3
• Publication year: 2020
• Author: Agatha H. Liu
• topic: Business of Law,Patent law,Intellectual Property

Developing a Global Patent Portfolio

Agatha H. Liu

Hickman Palermo Becker Bingham LLP

This article provides guidance on developing a global portfolio of patents or other forms of protection for your clients' inventions. The article first describes the significance of global invention protection. Next, the article reviews key factors to consider when pursuing invention protection on a global scale and shows how evaluating each key factor helps improve the drafting and prosecution of an application for patents or other forms of protection in individual jurisdictions. Finally, the article presents a summary of practice tips for a patent practitioner.

GLOBAL INVENTION PROTECTION

With the advent of the Internet, the world has become more connected than it used to be. It is now often imperative to have a global perspective in any endeavor. In particular, the creation of the Internet has also ushered in a new technology-focused era. Computer technology that has made the Internet possible and other technologies continue to grow all around the world, albeit to different degrees. Certain types of technological products, such as software, are easily distributed and utilized and the associated intellectual property (IP) rights need to be protected across different jurisdictions. The reality is that there are few or no legal barriers to rampant unauthorized copying of such technological products in all jurisdictions for which patent protection is not explicitly obtained.

In general, different countries or regions (referred to as "jurisdictions" hereinafter) manage patent assets through national or international patent law, such as the Patent Cooperation Treaty (PCT). To pursue global invention protection, it is important to adopt an effective approach of building a worldwide portfolio of patents or other forms of protection based on an understanding of the national and international laws, as discussed below.

Often times, a client may have candidate jurisdictions in mind for patent protection based on the locations of customers or competitors. A patent practitioner may then strategize the filing and prosecution of patent applications among these jurisdictions first. Knowledge of national and international laws, however, may sometimes also inform a practitioner on the selection of jurisdictions in which to pursue patent protection, as further discussed below.

FORMS OF PROTECTION

To pursue foreign patent protection, one of the first factors to consider is which forms of protection are available in a jurisdiction. The common forms of protection include a utility model¹ (providing patent-like protection and thus treated as a type of patent in this article), a utility patent, a design patent, or a plant patent. Different forms of protection have varied requirements and provide distinct sets of rights. Therefore, one form of protection may be more suitable for given subject matter than another.

In particular, for a utility model, while the requirement of novelty has to be met, that of non-obviousness may be less stringent or absent altogether. Similar to a utility patent, a utility model still allows the rights holder to exclude others from using the protected subject matter for a limited period of time. Therefore, a utility model may be more suited for subject matter that is weaker in inventiveness than would normally be required for a utility patent but can benefit from timely protection. Furthermore, in many jurisdictions, such as Germany, the validity of a utility model can be challenged for a fee, often to initiate substantive examination, only after the utility model is obtained.

In general, different forms of protection are mutually exclusive. While an applicant will be able to decide relatively easily whether to apply for a design or plant patent as opposed to a utility patent, the applicant may have difficulty choosing between a patent and a utility model, both of which are available in a significant number of jurisdictions (but not in the United States). Furthermore, the same invention might have different aspects or embodiments that are eligible for different types of protection. For example, for cars or cellular phones, applicants commonly obtain utility patents to protect the functional features and design patents to protect the ornamental features.

Therefore, once the patent practitioner has a disclosure meeting with the client, he or she should assess the merits of the given subject matter as well as the needs or desires for protection and determine which type(s) of protection are worth pursuing in a jurisdiction.

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FILING COSTS

Another factor that is often on a client's mind initially is the cost of filing a patent application in a jurisdiction. The filing cost usually comprises most of the official fees, translation fees if the application or just its claims must be filed in another language than that of its preparation, and the practitioner's fees. As the official fees for search and examination are often charged at the time of filing, the filing cost can depend on the type of search and examination framework in use, the form of a patent application to be filed, and so on.

The search and examination fees will be higher when the search and examination framework of the jurisdiction is more sophisticated, as further discussed below. In terms of the form of the patent application, many jurisdictions charge extra fees when the number of claims or the number of pages is above a certain limit, as that in turns increases the amount of search and examination that needs to be performed. In some cases, the limits are quite low while the excess fees are fairly high, presenting a tradeoff between coverage and cost. For example, the European Patent Organization charges at least $250 for each claim in excess of fifteen, while Japan charges a fee that is proportional to the total number of claims. For patent applications in the pharmaceutical industry, for example, the excess fees could turn out to be a major component of the total cost. When filing in jurisdictions where the applicant's language is not an official language, translation fees can also be quite significant due to the cost of translation of potentially a large amount of technical content.

At this time, other than the European Patent Organization, which represents a number of jurisdictions and imposes additional fees to search and examine a European patent application that can be nationalized in selected ones of those jurisdictions, the filing fees for a jurisdiction are generally in the $1,000 to $3,000 range, which are to be paid at the time of filing.² The additional costs of translation will vary with the length of the application and the language. After substantive examination begins, additional prosecution costs are incurred, such as practitioner fees for responding to office actions, appeals, or oppositions. The applicant must pay maintenance (or annuity) fees, which are official fees payable at prescribed intervals, usually every year, to keep a patent application or a granted patent in force, in those jurisdictions that require them. The United States, China, Japan, and Mexico are among the few jurisdictions in which the payment of maintenance fees begins only at the patent grant stage instead of earlier.

Therefore, a patent practitioner typically obtains an estimated filing cost in each jurisdiction of interest on or before the time of filing, to assist the client in financial planning.

SECURITY RESTRICTIONS

Another factor to consider initially is whether the jurisdiction applies any security requirements. A security restriction is a restriction imposed by a jurisdiction that makes filing an international or foreign application illegal due to security concerns of the jurisdiction unless a security clearance has been obtained from the jurisdiction. The applicant should consider whether any security restriction applies before preparing and filing a patent application anywhere in the world, as a jurisdiction may require filing first in that jurisdiction or obtaining a foreign filing license.

More broadly, different jurisdictions have different security restrictions, which may depend on the nationality or residence of applicants or inventors, the location in which the invention was made, the sensitivity of the subject matter of the invention, and so on.³ For example, China and Russia have security restrictions for inventions made in those countries, while Korea and India have security restrictions for inventions made by residents.⁴ When an inventor resides in India, a foreign filing license should be obtained from India before filing a patent application in the United States or the first patent application should be filed in India. In many European countries, such restrictions apply only to subject matter related to national defense or security.⁵ To comply with the security restriction imposed by a jurisdiction, the applicant generally must first file a patent...