When devising a patenting strategy, one of the questions that arise is where? Patent protection is territorial. Consequently, if patent protection is required in an international sense, ultimately a patent for the same invention must be sought in each country that is required. A harsh reality is that for countries in which patent protection is not sought within applicable timeframes, any valid patent rights are irretrievably lost in those countries. The question of where to patent should be closely aligned with a commercial strategy for exploiting the invention in an international context. Of course this means needing to budget costs for an international patenting strategy on a per country basis.
In a typical patenting strategy, a patent attorney is employed to prepare and file a patent application, usually in the home country. The initial filing, in effect, sets the time frames in which foreign filings must be committed to. For some countries this time frame is one year. By utilising the PCT system, for applicable countries, this time frame may be deferred for two and a half years. Nevertheless, the foreign filing stage, from a cost perspective, is an eye-opener and the first time that the reality of how the on-going patenting costs multiply on a country by country basis hits home.
The mechanics of conducting foreign filings is, to a large extent, quite administrative in nature. Nevertheless, the complexities centre around the fact that each country has varying requirements. Each country will inevitably require retaining a local agent. Different countries will require different documents, potentially with the need for legalisation and notarisation. Local language requirements will require translations.
Needless to say, patent attorney firms traditionally provide the skills, knowledge and expertise to co-ordinate and offer a foreign filing service.
However, in recent years, there has been the emergence of a number of so-called specialist foreign filing service providers touting the ability to significantly cut the costs involved in foreign patent filings compared with traditional patent attorney firms.
A foreign filing service provider co-ordinates the filing of a patent in multiple countries. They have been called ‘one trick ponies’ because their involvement ends as soon as the foreign applications are filed.
The history of the patent application leading up to the use of the services is not of concern to the service provider, nor is the subsequent fate of the foreign filings after filing.
After filing, the user must then co-ordinate the subsequent patenting processes with the various foreign agents that have been employed in the filing service.
In reality, one will find themselves lumbered with foreign agents as preferred by the service provider. As part of the cost-cutting business model, these agents typically offer discount filing costs with the expectation of recouping costs at later stages. While some service providers offer freedom of choice of foreign agents, this can be an illusion and cost incentives will tend to attract users to the preferred agents.
In effect, foreign filing service providers conduct and co-ordinate the mechanics of foreign filings and there is no reason to doubt that they can do this well. However, the model adopts a ‘one size fits all’ approach and this can prove to be a pitfall. Also the apparent cost-savings are in the here and now and do not offer foresight into potential cost issues in the long term.
The relationship between a patent attorney and their client is largely based upon trust. Within this relationship of trust, a good patent attorney will, sometimes behind the scenes, make decisions and offer recommendations beyond the mere mechanics of the foreign filing process.
A patent attorney will understand the history of the invention and the context of the commercial strategy aligned with a patenting strategy. Hence, a patent attorney will tailor a foresight into the future processing of foreign filings beyond the actual filing process. Cost-savings in the long term can stem from actions at the time of foreign filing and maintaining a co-ordinated approach with foreign agents beyond the actual filing.
Of course, patent attorneys may appear to lumber you with their own preferred network of foreign agents. However, again this boils down to trust and good attorneys do choose trusted agents that suit the particular requirements for particular clients and inventions. Within this context, a good patent attorney will keep foreign agents honest in the long term. Furthermore, by bringing an informed co-ordinated approach, a patent attorney can reduce long term costs by removing the need for each foreign agent having to fully immerse themselves and become fully familiar with the background of the invention.
Importantly, a patent attorney will understand that one size does not fit all in different countries. Different countries have issues concerning style and form of specifications. A number of countries have fees (sometimes considerable fees) associated with the number of claims that may warrant a culling of excess claims. Some countries have different concepts of suitable subject matter for patenting. Many countries allow amendments to be made at filing. Taking advantage of early amendments can avoid complications and reduce costs in the long term.
Foreign filing service providers do provide cut-cost no frills service to co-ordinate foreign filings. Such low cost does not necessarily equate to value-added service. Consequently, the apparent cost-savings in the here and now offered by foreign filing service providers cannot be guaranteed to offer overall cost-savings in the long term.
At Baxter IP, our patent attorneys strive to provide our clients with value-added service for their intellectual property within the overall context of actual commercial goals.