Loading presentation...

Present Remotely

Send the link below via email or IM


Present to your audience

Start remote presentation

  • Invited audience members will follow you as you navigate and present
  • People invited to a presentation do not need a Prezi account
  • This link expires 10 minutes after you close the presentation
  • A maximum of 30 users can follow your presentation
  • Learn more about this feature in our knowledge base article

Do you really want to delete this prezi?

Neither you, nor the coeditors you shared it with will be able to recover it again.


Foreign Filing Strategies

No description

Robert Fichter

on 23 March 2018

Comments (0)

Please log in to add your comment.

Report abuse

Transcript of Foreign Filing Strategies

Foreign Filing Strategies
0 Months
The Priority Application
First Filing
Subsequent Filings
The World - Contracts, Regions
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)

Madrid Agreement (@WIPO) -> International Registrations
Madrid Protocol (@WIPO) -> International Registrations
European Community Trademark Regulation (@EUIPO)
Benelux Trademark Convention (@BOIP)

The Hague Agreement (@WIPO)
European Community Design Regulation (@EUIPO)
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 (e.g. Belgium, Cyprus, France, Greece, Ireland, Italy, Lithuania, Latvia, Monaco, Malta, the Netherlands, Slovenia)

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

GCC is not (yet) 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
Trademarks, Designs
Priority Periods

The World

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

With Dennemeyer since 2008
Generic Business Strategies
Business Strategy
Cost Leadership
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
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?
Production (Low wage countries)
IP supports
Business Strategy

Business Strategy
Cost Leadership
German Utility Model
- The unknown weapon -
Branch off from any
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
10 years after application date of the patent application (not priority date)
2 months after grant of the patent
end of the opposition proceeding
That means that a granted patented is assumed to resume status pending during opposition proceedings
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 1300 €)
Search results will be reused during subsequent EPO proceedings
(EP direct; EURO-PCT; PCT with ISA=EPO)
Search fees refunded (100% during PCT searches: 1890 €; 84% during EP searches: 1205 €)

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 2018):
EPO: $2202
ILPO: $1009
IPAU: $1722
JPO: $1385
KIPO: $1134
ROSPAT: $691
IPOS: $1646

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 15 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?
IP supports
Business Strategy

Business Strategy
Fast Patent Protection
Reputation for Quality & Innovation
Patents, Utility Models
Leading Scientific Research
Copyrights, Trade Secrets
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?
Production (Low wage countries)
Distribution (Consider border seizure measures)
IP supports
Business Strategy

Business Strategy
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


Full transcript