Make Global Filings Easier By Using Country Templates

Moving Away from 'Everywhere'

If a client responds 'everywhere,' the conscientious patent attorney or agent must then consult with the client and discuss global filing issues, such as the costs involved with such a broad filing and the enforceability climates in various countries. Other, equally important, issues may also apply. For example, it may be advisable to file in a country with an uncertain enforcement climate if a major competitor is based there, or if the client is looking to form a joint venture with a company in that country.

However, such discussions take time and can also cause great debate on the relative value of patent protection in one country as compared to another. The client may also request additional information from counsel, such as comparative country cost data. Even if the question of 'where to file?' raises no real issue or debate, it can be quite expensive and time consuming if the client requests information on a new list of countries for each new global filing. In addition, this can result in a country selection that varies widely from one patent application to the next. The result may be spotty patent protection in countries where the client desires to establish a comprehensive patent estate for inventions in a technology area or product line. Therefore, a case-by-case approach may not only be time-consuming, but also does not guarantee a long-term satisfactory result. By using a country template, a safeguard is incorporated into the filing system that essentially assures that a uniform patent estate will be built in the countries that are important to the client's business.

Developing Effective Country Templates

Country templates are developed through careful background research. Specifically, creating a successful country template involves first developing a patenting strategy for each particular class of products or technology area and then only including those countries in the template that are consistent with this strategy. After the template has been developed, the only real question left to be resolved when filing a new application is simply whether or not the patent application to be filed is in some way unique enough to warrant a change in the list of countries in the relevant template. Much of the strategic thinking has already been done and incorporated into the template, which is then ready to be used over and over again. Assuming that the country template has been developed with care, and the patent application has been matched with the appropriate template, few changes in the template will generally be required.

Different Template Types

Different types of country templates may be developed. In particular, templates are normally based on a specific technology area or a product line. The key linking concept is that the new inventions will either serve essentially the same market or will have similar competitors.

For example, suppose a company makes fasteners and these fasteners are then incorporated into a variety of products, such as doors and trunks. Suppose further, that the company will conduct research to improve the manner in which it manufactures fasteners and will also conduct research on developing better fasteners especially for the door and trunk markets. The company will want to have a country template for any patents that cover improvements to its fastener manufacturing technology. The company may also want to develop a different country template for the patents that cover improvements to fasteners developed especially for the door fastener market, and still another country template for the patents that cover trunk fastener inventions. The company may choose to have only a local presence in the door fastener market while having an international presence in the trunk fastener market. The country filing templates would reflect this strategic difference.

Process vs. Product

Country templates based on the type of invention may also be useful in controlling costs. For example, patents on product inventions are generally more enforceable and, therefore, it may be desirable to file applications in a larger number of countries, ie in those countries in which others would be likely to manufacture, sell, or use a potentially infringing product. On the other hand, patents on process inventions or the machines used in those processes are generally less valuable due to the difficulty of discovering infringement and other enforcement issues. Therefore, if these process/machine patent applications are filed globally, they would normally be filed only in those countries where potential competitors have manufacturing facilities. Therefore, a country template for process/machine patent applications will almost always have a smaller list of countries than a country template for product applications. This obviously saves money in the long run.

Other Uses for Templates

Even though templates can be developed for inventions relating to a business' major product lines, there may still be inventions that do not fit neatly into those product lines. In fact, selecting countries for an invention in a new market area can be quite a challenge. However, a country template can be developed for such inventions, even if initially little is known about where such inventions might be most valuable. This can be done by using country filing data obtained from online databases, such as Derwent, for similar inventions. The prior art search used in developing the patent application can be used to identify the potential competitors that make inventions in the same technology area, so long as the search was made on similar inventions or on inventions that solve a similar problem. From that search, the top countries where these potential competitors have filed their inventions can be identified. The Patent Cooperation Treaty (PCT) makes this technique more complex because applicants can initially select to fill in all countries, which is duly recorded by the online databases. Therefore, once a few top competitors for the new invention are identified, it is important to check the filing history of their patents on a database such as INPADOC to see where the competitors have actually obtained patents, ie in any or all of the countries initially selected in the PCT application. The country template can then be developed with the confidence that most of the important countries have been identified and included on the template. The information used to develop such templates will also identify countries in which a market for the new invention probably already exists. Of course, once developed, this template can then be used if additional inventions are made in this new technology area.

Country templates may also be helpful when filing applications globally via the PCT. This is especially true when the overall IP strategy calls for all available PCT countries to be selected during the initial filing of the application. The country template can be very useful as the default national designation document because of the strategic template research that has been done previously.

Conclusion

Country templates developed for a client's inventions can help make the process of filing global patent applications simpler. With country templates, the major issues related to global filings can be addressed in depth with the client. As new inventions are developed, the templates can be applied with only a few additional filing decisions needing to be made.

H. Jackson Knight is Intellectual Property Team Leader for Dupont's Personal Protection and Advanced Fibers Systems business units and author of 'Patent Strategy for Researchers and Research Managers, 2nd Edition' (John Wiley & Sons).

It is important for a patent attorney to be able to quickly and effectively advise a client who is filing a large number of international patent applications as to where such patent applications should be filed. One tool that can be useful in such situations is a 'country template.'

A country template, in its simplest form, is a default list of countries that is designed to meet a business need for a particular product line. This list becomes the starting point for the final selection of countries for every patent application that the client will file for that product line. The template is not fixed; additional countries can be added or deleted for any particular patent application. However, the overall process of selecting the countries is substantially simplified because the country template inherently contains the assumption that the patent application will be filed in a subset of all the countries of the world.

Having a country template is superior to asking the client for each new patent application the open-ended question: 'Where should the application be filed?' This question invites the client to answer 'everywhere' ' in every country in the world. The client's rationale behind such an answer is that if the invention to be patented could be sold or used in any country, then patent applications should be filed in all countries. However, contrary to this rationale, such a broad filing is rarely required.

Moving Away from 'Everywhere'

If a client responds 'everywhere,' the conscientious patent attorney or agent must then consult with the client and discuss global filing issues, such as the costs involved with such a broad filing and the enforceability climates in various countries. Other, equally important, issues may also apply. For example, it may be advisable to file in a country with an uncertain enforcement climate if a major competitor is based there, or if the client is looking to form a joint venture with a company in that country.

However, such discussions take time and can also cause great debate on the relative value of patent protection in one country as compared to another. The client may also request additional information from counsel, such as comparative country cost data. Even if the question of 'where to file?' raises no real issue or debate, it can be quite expensive and time consuming if the client requests information on a new list of countries for each new global filing. In addition, this can result in a country selection that varies widely from one patent application to the next. The result may be spotty patent protection in countries where the client desires to establish a comprehensive patent estate for inventions in a technology area or product line. Therefore, a case-by-case approach may not only be time-consuming, but also does not guarantee a long-term satisfactory result. By using a country template, a safeguard is incorporated into the filing system that essentially assures that a uniform patent estate will be built in the countries that are important to the client's business.

Developing Effective Country Templates

Country templates are developed through careful background research. Specifically, creating a successful country template involves first developing a patenting strategy for each particular class of products or technology area and then only including those countries in the template that are consistent with this strategy. After the template has been developed, the only real question left to be resolved when filing a new application is simply whether or not the patent application to be filed is in some way unique enough to warrant a change in the list of countries in the relevant template. Much of the strategic thinking has already been done and incorporated into the template, which is then ready to be used over and over again. Assuming that the country template has been developed with care, and the patent application has been matched with the appropriate template, few changes in the template will generally be required.

Different Template Types

Different types of country templates may be developed. In particular, templates are normally based on a specific technology area or a product line. The key linking concept is that the new inventions will either serve essentially the same market or will have similar competitors.

For example, suppose a company makes fasteners and these fasteners are then incorporated into a variety of products, such as doors and trunks. Suppose further, that the company will conduct research to improve the manner in which it manufactures fasteners and will also conduct research on developing better fasteners especially for the door and trunk markets. The company will want to have a country template for any patents that cover improvements to its fastener manufacturing technology. The company may also want to develop a different country template for the patents that cover improvements to fasteners developed especially for the door fastener market, and still another country template for the patents that cover trunk fastener inventions. The company may choose to have only a local presence in the door fastener market while having an international presence in the trunk fastener market. The country filing templates would reflect this strategic difference.

Process vs. Product

Country templates based on the type of invention may also be useful in controlling costs. For example, patents on product inventions are generally more enforceable and, therefore, it may be desirable to file applications in a larger number of countries, ie in those countries in which others would be likely to manufacture, sell, or use a potentially infringing product. On the other hand, patents on process inventions or the machines used in those processes are generally less valuable due to the difficulty of discovering infringement and other enforcement issues. Therefore, if these process/machine patent applications are filed globally, they would normally be filed only in those countries where potential competitors have manufacturing facilities. Therefore, a country template for process/machine patent applications will almost always have a smaller list of countries than a country template for product applications. This obviously saves money in the long run.

Other Uses for Templates

Even though templates can be developed for inventions relating to a business' major product lines, there may still be inventions that do not fit neatly into those product lines. In fact, selecting countries for an invention in a new market area can be quite a challenge. However, a country template can be developed for such inventions, even if initially little is known about where such inventions might be most valuable. This can be done by using country filing data obtained from online databases, such as Derwent, for similar inventions. The prior art search used in developing the patent application can be used to identify the potential competitors that make inventions in the same technology area, so long as the search was made on similar inventions or on inventions that solve a similar problem. From that search, the top countries where these potential competitors have filed their inventions can be identified. The Patent Cooperation Treaty (PCT) makes this technique more complex because applicants can initially select to fill in all countries, which is duly recorded by the online databases. Therefore, once a few top competitors for the new invention are identified, it is important to check the filing history of their patents on a database such as INPADOC to see where the competitors have actually obtained patents, ie in any or all of the countries initially selected in the PCT application. The country template can then be developed with the confidence that most of the important countries have been identified and included on the template. The information used to develop such templates will also identify countries in which a market for the new invention probably already exists. Of course, once developed, this template can then be used if additional inventions are made in this new technology area.

Country templates may also be helpful when filing applications globally via the PCT. This is especially true when the overall IP strategy calls for all available PCT countries to be selected during the initial filing of the application. The country template can be very useful as the default national designation document because of the strategic template research that has been done previously.

Conclusion

Country templates developed for a client's inventions can help make the process of filing global patent applications simpler. With country templates, the major issues related to global filings can be addressed in depth with the client. As new inventions are developed, the templates can be applied with only a few additional filing decisions needing to be made.

H. Jackson Knight is Intellectual Property Team Leader for Dupont's Personal Protection and Advanced Fibers Systems business units and author of 'Patent Strategy for Researchers and Research Managers, 2nd Edition' (John Wiley & Sons).