Canadian technology companies often wonder how to best secure and leverage their patent rights globally. After evaluating patentable technology developments and filing an initial patent application, the question arises where to seek foreign patent protection.
There is one year to file internationally and claim priority to the first filing. As global patent rights are being sought, efforts to monetize the patent portfolio, monitor competitive activity and identify collaboration opportunities (i.e., cross-licence) can begin. A winning patent strategy depends on securing global patent protection cost and time effectively.
Start with a well-crafted patent application adapted for filing in multiple jurisdictions of interest. Additional claim fees kick in after 20 claims in the U.S., whereas extra claim fees apply after 15 claims in Europe. A patent search ahead of time can also help to prosecution-proof your application.
Next, where does it make sense to seek foreign patent protection? Based on business and product forecasting insights available, consider existing and potential future markets for the technology. For many Canadian technology companies, the U.S., Canada and Europe are critical, but this can vary with the type of technology and industry area (e.g. the Middle East, South America and Russia may be quite important to cover for those selling products to the oil industry).
Where are key competitors located? Where are they manufacturing competitive products? Where are they doing business now and potentially in the future? Also consider countries known as exporters of similar products, or cheap knockoffs, where stopping infringement may require registered patent rights.
Once the decision has been made on “where” to file, there are useful and evolving international patent mechanisms that can help achieve global patent protection on a cost- and time-effective basis:
Even a well-drafted patent application needs to be skillfully steered through the patent offices. Teleconferences with an examiner can be especially useful in reducing the “back and forth” of prosecution. This approach has been found to be so beneficial that the U.S. Patent Office introduced a First Action Interview Program, where applicants may speak with the examiner before a first communication is issued and which often results in early allowance. Last year, FAIP resulted in a 29.8-per-cent first Office Action allowance rate for a U.S. patent application versus the roughly 12-per-cent first Office Action allowance rate without FAIP.
With an early allowance in hand, accelerated examination may be requested in other countries under various Patent Prosecution Highways including the Global Patent Prosecution Highway pilot program now established among 24 countries, including the U.S., U.K., Germany, Japan, Korea, Canada, Australia and most recently New Zealand on July 6. Other Patent Prosecution Highways are available including the IP5 PPH, which includes Europe, Japan, Korea, China and the U.S. The PPHs streamline and harmonize prosecution by permitting patent offices to benefit from work previously done by other participating offices saving time, cost and effort. For example, in Canada, time to a first office action shrinks to between two and three months from one to three years and sometimes only small administrative matters are left to deal with.
There are also standalone “fast tracks” such as the U.S. Patent Office’s “Track 1” examination procedure, which currently results in a first Office action in an average of 61.6 days and final dispositions in an average of 184 days.
While it can be strategic to go fast, it can be also be beneficial to maintain a pending application after the first patent is granted; for example, a continuation application in the U.S. or a divisional application in Europe or Australia. Having a pending application provides the possibility of tailoring the application claims to cover competitor products or processes as they develop.
Seeking rapid allowance of a first application is especially helpful in determining the scope of patentable subject matter for the entire portfolio as the prior art found can be illuminating and instructive in handling of the foreign applications. Issued global patents can assist with financing or increase company value during acquisition as they can establish formidable legal fences around a key technology market.Then it’s time to sit back and enjoy some oysters!
Isi Caulder is a partner with Bereskin & Parr LLP.