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Foreign Filing Strategies

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Robert Fichter

on 17 March 2016

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Transcript of Foreign Filing Strategies

Foreign Filing Strategies
0 Months
6
The Priority Application
12
First Filing
Subsequent Filings
Trademarks
Designs
Patents
Reinstatement
The World - Contracts, Regions
Patents
PCT (Patent Cooperation Treaty @WIPO)
EPC (European Patent Convention @EPO)
EAPC (Eurasian Patent Convention @EAPO)
AIPO/OAPI (African Intellectual Property Organization)
ARIPO (African Regional Intellectual Property Organization)
GCC (Gulf Cooperation Council @GCC Patent Office)

Trademarks
Madrid Agreement (@WIPO) -> International Registrations
Madrid Protocol (@WIPO) -> International Registrations
European Community Trademark Regulation (@OHIM)
AIPO/OAPI
ARIPO
Benelux Trademark Convention (@BOIP)

Designs
The Hague Agreement (@WIPO)
European Community Design Regulation (@OHIM)
AIPO/OAPI
ARIPO
Benelux Design Convention (BOIP)
The World - Countries
Regions and Countries can be members of Contracts

Examples of some specialties:
EPO is a member of PCT
Individual countries in Europe are members of the European Patent Convention; EPO is not EU (e.g. Switzerland, Turkey)
Specialties: Some European countries have closed the national route in PCT. Protection via a PCT application can only be obtained via a EP application (Belgium, Cyprus, France, Greece, Ireland, Italy, Lithuania, Latvia, Monaco, Malta, the Netherlands, Slovenia)

OHIM is a member of the Madrid Protocol. Thus, a EC mark can be obtained via an International Registration (IR)

GCC is not a member of PCT

Regional or national applications can be priority applications

PCT Application
EP Application
National Application

As opposed to International Registrations, which require a base mark.
The Priority Application
Patents
Trademarks, Designs
Priority Periods
Remedies

The World
Contracts
Regions
Countries

The Strategy
Alignment with Corporate IP Strategy
Why file?
Where to file?
What to file?
How to file?
Dr. Robert Fichter
About me
Chemist
Patent Attorney (DE)
European Patent, Trademark and Design Attorney
Director of IP Law Firm Dennemeyer & Associates
CIO of Dennemeyer Group

With Dennemeyer since 2008
Generic Business Strategies
Business Strategy
Cost Leadership
Differentiation
Focus
Low cost producer for a given level of quality
Sell product/service at average prices
—> Profit higher than that of competition
Sell product/service below average industry prices
—> Gain market shares
Concentration on narrow segment
Product/service with unique attributes
Be a cost leader by:
Improving process efficiencies
Gaining unique access to a large source of lower cost materials
Outsourcing
Vertical integration
Avoiding costs in general

Internal strengths:
Capital for required investment in production assets
Skills in product design for efficient manufacturing
High level of expertise in manufacturing process engineering
Efficient distribution channels

Value added by the unique product allows charging of a premium price
—> Higher price more than covers extra costs incurred in offering product
—> Increasing supplier costs can be passed along to the customers
Internal strengths:
Access to leading scientific research
Highly skilled and creative product development team
Strong sales team
Corporate reputation for quality and innovation

Achieve cost advantage or differentiation
—> High degree of customer loyalty
—> Discourage competitors
Using a focus strategy means:
Having less bargaining power with suppliers
Passing higher costs on to customers as close substitute products don't exist
Internal strengths:
Focus a broad range of product development strength to a narrow market segment

Enforceable Protection
Where to file?
Home/Inventor's Country
Legal requirement?
Competitors
Location
Production (Low wage countries)
Distribution
Customers
Trademarks
IP supports
Business Strategy

Business Strategy
Cost Leadership
German Utility Model
- The unknown weapon -
Branch off from any
pending
application with effect for Germany:
European patent application
PCT application
German patent application
Registration only
Within a few months
Litigation possible as it is a registered right
Pending?
10 years after application date of the patent application (not priority date)
and
2 months after grant of the patent
or
end of the opposition proceeding
That means that a granted patented is assumed to resume status pending during opposition proceedings
Licensing
Capital
Patents, Utility Models
Engineering Expertise
Cost-efficient Foreign Filing
Avoiding Unnecessary Costs
Trademarks, Designs
Efficient Distribution Channels
Low cost producer for a given level of quality
Cost-efficient Patent Filing
... through search fee optimization
Luxembourg model
First filing in LU @ 20 €
Search request @ 250 €
Search conducted by EPO (usual fee 1285 €)
Search results will be reused during subsequent EPO proceedings
(EP direct; EURO-PCT; PCT with ISA=EPO)
Search fees refunded (100% during PCT searches: 1875 €; 84% during EP searches: 1165 €)

Full refund only if unchanged or restricted claims
Filing language EN, DE, FR; if EN: claims translation into DE or FR
Russian model
Chose cheapest International Search Authority for PCT applications
Available ISAs for US-based PCTs (USPTO as Receiving Office - Mar 2016):
EPO: $2097
ILPO: $912
IPAU: $1560
JPO: $581
KIPO: $1120
ROSPAT: $433

Check first if selected ISA searches the technology field of the invention
ROSPAT searches science/math theories, plant/animal varieties, business methods/games, presentation of information, computer programs (though not all is patentable in Russia)
... through country selection
Low official and translation fees
Europe: Enter national phase only in GB and DE
Low official fees
GB: only 210 GBP filing, search, and examination
DE: only 210 EUR filing and examination (10 claims, only)
Similar assessment of patentability criteria: Prosecution results can be re-used
Translation fees DE/EN as low as 12 EUR/100 words
Same outside counsel can be used for both jurisdictions
Add filing in LU, if needed
with a small focus on Europe
Where to file?
Inventor's Country
(Scientific Institutions)
Legal requirements?
Competitors
Location
Production
Distribution
Customers
Trademarks
IP supports
Business Strategy

Business Strategy
Differentiation
Fast Patent Protection
Reputation for Quality & Innovation
Patents, Utility Models
Leading Scientific Research
Copyrights, Trade Secrets
Creativity
Trademarks, Designs
Strong Sales
Product/service with unique attributes
Fast Patent Protection
... through examination expediting
with a small focus on Australia
Where to file?
Home/Inventor's Country
Legal requirement?
Competitors
Location
Production (Low wage countries)
Distribution (Consider border seizure measures)
Customers
Trademarks
IP supports
Business Strategy

Business Strategy
Focus
Patents, Utility Models
Broad Range of Product Development Strength
Concentration on a narrow segment
High Quality Patent Protection
... through several search reports
Combination model
Combine first filing in home country with any of the other models
US + AU + RU:
Early receipt of search reports prepared by very different examiners
US + LU:
Early receipt of search report prepared by EPO
Most likely same examiner as in subsequent EP proceedings
No claim fees in LU
Allows claim amendments based on prior art revealed and opinions issued by different search offices

Results in high-quality patents possible needed for litigation due to niche market situation
Down Under model
First filing in Australia or second filing in Australia claiming priority of national filing
Request expedited examination at no additional costs
Simple argument required to be allowed expedited examination (e.g. commercial purposes)
Grant after 6 to 8 months possible (if examination report responded quickly and sufficiently)
Request PPH to accept granted claims in priority country
Patent vs. Utility Model
Products / Processes
Quick Registration
Enforceability
Examples:
Wal-Mart
McDonald's
IKEA
Example:





Example:





Full transcript