Learn the Basics:

of Foreign FilingDon't be afriad

The United Statesmakes up only 23% ofthe world's economy.

Foreign FilingWhy?

1 2 3 4

23% 75%

Each country isseparate. A patent isonly valid within that

country

Several strategic filingscan cover 75% of the

world’s GDP.

There are other big,valuable markets.Leverage them.

Domestic Validity Strategic Value

TimelineForeign Filing

Approaches

Month 1 Month 12 Month 30/31

Initial Application

PCT Application

EuropeanPatent

Applications

Applicationsin Other

Countries

Consider Where It's ValuableWhere to File?

“Make, useor sell” in

that market

Market size &profitability

De factocross-border

protection

Location ofcompetitors

Enforceability

Interest ofpotential

licensees &/oracquirers

Translations

Initial local agent fees

Local agent fees for prosecution

Government fees

Annuity fees

Typical Costs

Office actions

Filing

Examination

Publications

Search

Grant

Be ready in advance of month 12 or 30.

Translations

Assignments

Foreign associates

Remember...take advantage of deferrals whenavailable!

This is a key cost driver.

PAY ATTENTIONto theorganizationof how youanswer officeactions.

Total Cost vs. Quality

Qua

lity

Cost

Number of people reviewing office actions.

Diminishing return on quality as youadd more people to review office actions.

Find a Balance

Quality Cost

Certain claims (not any claims)

Granted(if possible)

In a chosen country

For a reasonable price

EVERYTHING ELSE IS NONESSENTIAL!

#1CLEAR THE TITLE EARLYForeign Filing

Best Practices

The application needs to beproperly in the name of theapplicant, not the inventor(s),before national phase.

You should get the assignmentsprior to the first filing.

#2

PLAN AHEAD Foreign Filing Best Practices

Start early to avoid last minutepanics and ensure qualitythroughout the process.

#3

FOCUSForeign Filing Best Practices

Focus on the keyclaims and proceedwith the applicationin a timely manner.

You can increase patentportfolio value with theright strategy.

Remember to first examine the why,where, and when to file; balance thequality vs. cost; and follow bestpractices.

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