IP teams don’t always lean on analytics tools and data to support the numerous foreign filing decisions they face. Yet making international patent filing decisions in multiple countries is a complex process involving a complete analysis of the legal, financial, and markets involved.
The AcclaimIP™ Foreign Filing Report helps you assess the merits of your invention, strengthen your overall global patent filing strategy, and provides insights into your competitive landscape.
Assessing the Merits of Your Invention
Evaluating the value of a patent can be challenging due to all the factors and information required to get a clear picture of the potential value of the patent to the business. Take the time to thoroughly assess the quality of your patent and the prior art before making any foreign filing decisions using analytics to support you.
These analytics tools and data below can help you measure the value of your invention:
1. Decision Support Publication Data from File Wrapper of Priority Case
Information in the file wrapper of your priority filing can be used to evaluate the patentability and the likelihood of the patent being granted prior to investing in filing additional foreign counterparts.
In the Foreign Filing Report, you can see all the original filing and filing wrapper activity, which saves you time from having to search through emails and electronic folders to retrieve and review this information.
Consider the example below from the Foreign Filing Report. The Decision Support Publications section of the report contains a list of all the file wrapper documents relevant to foreign filing decisions rejections, amended claims, and applicant arguments made.
Fig 1: Decision support publications in the Foreign Filing Report
In this example, you see amended claims after a non-final rejection. A quick read of the examiner’s arguments in the Non-Final Rejection, and these amended claims your patent attorney submitted, gives you a better indication of the scope of the final claims you are likely to win, which should factor into your foreign filing decisions.
If the prosecution of the priority filing looks good, then continue with your original filing plan or extend it. On the other hand, if your claims have already significantly narrowed, then consider paring back your filing plan, and only filing in the most important countries.
2. International Search Report and Category Data
In AcclaimIP, you can quickly surface data from International Search Reports (ISR) conducted by the International Search Authority of your choosing. An International Search Authority (ISA) is a patent office that searches for prior art relevant to your PCT application.
One example of using such data in AcclaimIP to determine upfront the patentability of your inventions is below. Cited PCT references now come with category codes (X, Y, I, A, etc.) which tell you how the examiners evaluated each reference’s relevance to your claims.
The codes help you determine if it is a reference of the general prior art (A) or was deemed relevant to the patentability of one or more of your claims (X, Y, I).
Fig. 2: In AcclaimIP citations, the patents and search reports are annotated with category codes, rejections codes, and phase codes on the relevant prior art uncovered during the examination.
3. Dashboards in AcclaimIP
It could take hours for a skilled attorney to read the digital International Search Report of the PCT illustrated above and evaluate these 11 references.
Today, with AcclaimIP algorithms, we can see that only the top reference was deemed relevant to the claims for both novelty (X), and obviousness (Y) in a dashboard view. Dashboards in AcclaimIP help you better understand the patentability and scope of your invention and streamline decision making.
Determine Your Filing Plan
If you are considering filing in more than one jurisdiction, two approaches commonly pursued are:
- File in all selected jurisdictions within 12 months of the priority filing
- File a Patent Cooperation Treaty (PCT) application which extends the filing deadline to a total of 30 months (about two and a half years) before you are required to file in additional PCT member countries, which is currently 157 countries
76% of the time, patent owners chose to file a PCT application when considering patents filed in at least 4 countries in the last 10 years. The most probable reason for this is the PTC gives patent teams time to determine whether to make an additional investment in that patent family.
Research example from AcclaimIP analytics specialists using Anaqua’s proprietary data.
Filing a PCT application gives you more information from the ISR and claims. Both can influence your foreign filing decisions since they may narrow the scope of your intended claims or possibly invalidate them altogether.
- The international search report performed by your chosen PCT receiving office may limit the scope of the patent you had hoped to receive.
- Additionally, you will have time to progress the examination of your priority filing including office actions, submitted prior art, and re-submitted claims. This can give you a much better indication of what the final claims are likely to be (not only in the priority jurisdiction but in foreign jurisdictions as well).
Analytics tools and data can ultimately help you determine the quality of the invention and the derived claims by assessing how it's likely to impact your business. You can determine how differentiated your invention and the related products may be, understand whether you can grow market share, or potentially contribute to an industry standard. The opportunities are many.
Competitive Patent Landscape
Another consideration when making foreign filing decisions is understanding where you file today, and where your competitors file. Some of the factors you should consider include knowing where your business generates revenue, where your manufacturing facilities are located and those of your competitors, and the current competitive patent landscape of your industry.
Filing a few key patents in small market jurisdictions where your competitors typically file—which often indicates that they have manufacturing and/or engineering facilities in those countries—can give your company a competitive advantage by stopping infringement at the source. Consider the following example:
Fig. 3 Compare your Foreign Filing history against key competitors which exposes potential gaps in specific geographies compared to other industry players.
In this example, you can see that Competitor One has a relatively large number of filings in India compared to Our Company. I am not an expert in the oil and gas exploration and extraction market, however, let’s assume this is due to Competitor One having manufacturing and engineering facilities in India. This filing data gives you the competitive intelligence needed to file select patents in India merely to pose a competitive threat.
It would be very time intensive to create and pull this type of data together internally.
The AcclaimIP Foreign Filing Report enables you to have consistent and accurate competitive data and insight with just a single click to support your foreign filing decisions.
Foreign Filing Data Gives Clarity to IP Teams
You no longer need to make foreign patent filing decisions with limited information and work in isolation. You also don’t need to try to piece it together in Excel spreadsheets and run variants in charts which could take hours or even days.
With the right analytics tools – you can uncover insights required to make intelligent and impactful foreign filing decisions. IP teams can easily assess the merits of their invention upfront and have confidence their IP is protected in global markets from competitors.
>>> How to access the report: The AcclaimIP Foreign Filing Report is available for AcclaimIP clients with Analyst+ seats, AQX®, and PATTSY WAVE® clients who subscribe to Premium Analytics.