The global nature of most businesses means that companies are likely to seek patent protection in several countries. Often a balance must be struck between the ambition to cover a large number of markets and the financial cost involved in the examination procedure and the maintenance of IP rights in many jurisdictions.
To maximise the impact of each filing it is therefore important to set goals and have a clear idea of what the company is trying to achieve with its patent portfolio. Every company, and possibly every product within the company, is likely to demand a specific filing strategy.
If your goal is to develop exclusivity and push your competitors away from your markets, then you may need protection in many countries. On the other hand, if you simply want to use your patent application as a marketing tool, then filing in a single country might be sufficient. So what factors should you consider when deciding where to file?
Knowing your market and its size is a good place to start. You should certainly consider where you intend to develop your market in the next 5 to 10 years or more. Having a good understanding of where your key competitors are operating is also important as your competitors’ market may be different from yours. Protecting in your competitors’ market can be used to provide some leverage in case a competitor attacks your portfolio. It can also be used as an efficient licencing tool.
Of course seeking protection where your product is manufactured is key. Ask yourself how likely it is that manufacturing will remain in a specific country over the next 20 years. Some companies choose to diversify their chain of production to be less dependent on a single country for manufacturing. In this scenario protection should be sought in the current manufacturing country and at least one potential future candidate country.
Also consider how easy it would be to enforce your IP right in a particular jurisdiction[1]. Some jurisdictions have more reliable or friendly litigation systems than others, that can help reduce the inherent unpredictability of patent litigation.
Consider the logistic and entry points for import / export of your product and also of your competitor’s products. For instance in Europe the main entry ports include Hamburg (Germany), Rotterdam (Netherlands) and (Belgium) among others. Protecting in an entry point means that you can put pressure on the whole distribution chain of your competitor. This can be used as a leverage during litigation procedure.
In summary, there is no one-size‑fits‑all filing strategy and every company must devise its own approach. While seeking protection in the company’s major markets provides the core of the protective shield, gathering intelligence about key competitors can held devise a more comprehensive strategy.
At Scintilla, we help innovative companies get a grip on their intellectual property. Our unique commercial approach combines registration of patents and trade marks with strategic input so that IP can be a springboard for business growth. If you would like to discuss your IP needs, do contact us or book a free initial consultation!
[1] https://www.wipo.int/edocs/pubdocs/en/wipo_pub_941_2018-chapter1.pdf