Reasons to Develop an Iterative Foreign Filing Strategy

Friday, September 22, 2017

By Michael Viscariello, Product Marketing Manager at Anaqua

The principal objectives for foreign filing are protecting revenue streams and blocking competitors, however, efficiency and affordability also predominate the strategy due to prosecution time and expense implications; blanketing the entire world in patent coverage simply isn’t practical. Ultimately, developing a foreign filing plan requires a thorough analysis of the selected markets, attendant costs, competition’s position, probability of success in obtaining grant, and, most importantly, the value derived from the patents secured. Corporations need an iterative and cost effective approach to remain competitive in their requisite markets.

For law firms, there are various other considerations to assess in counseling clients. Is the application still eligible for protection in other jurisdictions? If so, what are the applicable rules? Law firms well informed on international novelty laws, and where they’re most favorable, do well counseling clients on filing strategy. Further, counseling clients to protect their budget is critical for an IP law practice. Does the client even have the means to enforce their rights in a jurisdiction if needed? Large prosecution spend consumes a corporate IP budget, budget that’s better leveraged with a leaner portfolio the client can activate through assertion opportunities. The strategic firm that counsels their client in this manner earns the assertion business.

Foreign filing also becomes increasingly complicated with international politics. Could the filing rules change in the future making current strategies obsolete? Think about Brexit. Does the jurisdiction have a mature patent administration? China amended its IPRs to comply with The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) to become a member of the WTO in 2001; yet, there are still allegations regarding the ability to obtain IP rights in the same [impartial] manner that other jurisdictions provide.

Knowing this, is it logical to sell in a particular jurisdiction? China is one of the largest markets in the world and growing exponentially. Obtaining patent protection to sell a company’s products there could prove highly lucrative, and not selling there could be a competitive disadvantage on top of the potential revenue loss. Moreover, there are still accusations to address surrounding foreign corporations’ ability to protect the technology it brings to China. Ultimately, understanding the return on investment in terms of time, money, and security is essential to building and counseling a strong foreign filing strategy.

Developing a comprehensive and iterative foreign filing strategy can be an immense undertaking. Thoroughly assessing goals and budgetary constraints against the activity in the market produces a targeted strategy to move the company in the right direction.

Read more about Foreign Filing:

Considerations for Developing a Comprehensive Foreign Filing Strategy

Michael Viscariello is a Product Marketing Manager at Anaqua, one of the world’s leading providers of IP management and analytics software and services, where he focuses on IP analytics and helping clients improve their business practices through operational and market visibility. Prior to joining Anaqua, Mike spent six years working for two national, multi-practice law firms based in Boston where he helped implement and train staff on a variety of software solutions aimed at streamlining the firms’ operations. Mike is a graduate of New England Law | Boston where he studied business law and transactions. Prior to graduation, Mike transitioned to Anaqua from the legal sector to pursue a career aligning with his passion for technology and analytics.