Strategic IP Management

US-focused Patenting!

Strategic IP management is cost-effective, so focuses on the USA. The US is the largest market and likely to remain so for the foreseeable future. To make money in the US, you must play by US rules – the most important (only?) rule being, “Don't infringe claims protected by the United States Patent and Trademark Office (USPTO)!”
Your US operations are free to “infringe” claims on patents issued by other patent offices. What the UK Patent Office grants doesn't matter in the USA. Neither does the the Euroopean Patent Office (EPO). Of course, the converse applies - your GB (Great Britain) patent provides no protection within the US. The EPO is irrelevant. So, if you can't patent it in the US, your best hope is to keep your invention secret – globally. That is not always possible. For example, regulatory agencies want to know exactly what's in your medication. Or the secret might be accessed by reverse engineering. In these cases, and others, it's best to protect your invention with a patent – starting with a patent from the United States Patent and Trademark Office (USPTO).

US patents were authorized in 1787 by Article One Section 8(8) of the US constitution and later codified under Title 35 of the United States Code (“35 USC”). The Examiner at the USPTO will use the current Manual of Patent Examining Procedures (MPEP) to argue against your application and you (or your lawyer/agent) might use the MPEP to counter argue. The MPEP is over 3000 pages and describes the laws and regulations that must be followed in the examination of US patent applications.

Getting the biggest bang for your buck

Hiring US lawyers to draft and file a patent with the USPTO and ignoring the rest of the world is not cost-effective nor strategic. First, US lawyers are very expensive and, second, several of the non-US markets provide profitable opportunities which cannot be ignored (assuming your invention has nothing to do with baseball, basketball or similar US icons).

Hire a UK attorney to draft the application and file it with the UK IPO. Within 12 months ask the UK IPO to forward your application to the UK’s Patent Cooperation Treaty (PCT) “International Searching Authority” (ISA) which, is the European Patent Office (EPO). A few months later the EPO will deliver the International Search Report (ISR) and a written opinion on patentability, providing analysis of the potential patentability of the invention. If it is unfavourable, you can amend the claims in your international patent application and request an International Preliminary Examination. However, it is probably better to make those amendments at the National Phase, when you start to pursue the grant of your patents directly with the USPTO and the EPO (less than 30 months from the earliest filing date of your initial application, from which you claim priority).

Your UK attorney can prosecute your application through the EPO but will need a patent agent to move your application forward at the USPTO. Notice the word “agent”.
A patent agent has a degree in science or engineering, passed the USPTO’s Patent Bar and is registered with the USPTO to prepare, file and prosecute patent applications on behalf of clients.
A patent attorney has a degree in law, passed a state bar and also passed the USPTO's Patent Bar and is registered. They are not required to have a science or engineering degree, but most do.
A patent agent is much cheaper than a patent attorney and more appropriate for the job at hand.

Unfortunately, most UK attorneys are “hard-wired” into the attorney network and want to maintain that special relationship with their transatlantic peers – mostly because the US attorneys send them business (passing American clients over to their UK friend to handle European issues).
You're paying the bills so instruct your UK attorney to use an agent. There are over 10,000 patent agents (7 of which are in the UK, last time I checked) and can be found at the USPTO's “Patent Attorneys/Agents Search”.
The agent will “Americanize” the application as necessary and may have to rewrite some claims but, for the most part the application will require only a little reworking.

The applications will work their way through the EPO and USPTO. The examiners will send objections and your UK attorney will reply to the EPO while your US agent will reply to the USPTO. This is where your attorney and agent really earn their keep. They should include each other in correspondence to you and you should copy your replies to them. Be aware that claims rejected by the EPO might be passed by the USPTO. Importantly, if the EPO rules that at least one claim is patentable, your US application can take the Patent Prosecution Highway (PPH), giving your application “fast-track status”. The reciprocal also applies.

Congratulations, it's a patent

If all goes well, the USPTO will grant you a US patent and the EPO will do likewise.
Within three months of the EPO's publication of the grant, you should validate in the UK, Germany and France.
Fees are paid and celebrations are called for.

Each year, throughout the useful life of the patent, Maintenance Fees must be paid to the patent offices in the UK, Germany and France. Log the Due Dates in your calendar (computer) with a lead time of a month or week, depending upon your needs. Each year the fee is a little higher. All can be paid by bank transfer – in GBP to the UK or Euros in France and Germany. Each office has its own “method”. France has a specific form (not available in English) but Germany has no form at all and instructs you to simply identify the German Patent by its number in the “Optional Note” lines of the BACS.

US patents do not have annual fees. Instead, payments are made in years three, seven and eleven – increasing in amount at both steps. When your patent agent submitted your application s/he would have identified you as a “Small Entity” so your fees, including the Maintenance Fees, are half price! If you qualify for “Micro Entity” status, they are halved again. The USPTO have made paying these fees a user-friendly experience. At any time you can surf over to the USPTO website, check your three “due dates” and the windows (dates) for payment and the grace period. I write these at the top of my “scribble copy” (photocopy with my notes) of the patent and on the patent file envelop itself. I also log it into my calendars (work calendar and home). You can pay with a credit card. It’s as easy as buying something on Amazon.

There are companies (CPA global, for example) who will pay these fees on your behalf and on schedule. They will invoice you for the fees and include a sizeable mark-up. I don’t use them and suggest you avoid them too.

If you can only afford one country, then, of course, make it the USA. That being the case, it would better to employ from the start a patent agent registered with the USPTO. There's no need (or use) for a UK lawyer and the UK Patent Office doesn't care.

What about other countries?

If you see opportunities in other EPC countries, include them in the EPO validation list, but most require translations and, remember, you must pay Maintenance Fees each year to each of them. These annual fees and the administrative hassle may haunt you.

If your product or service has a significant market in the Commonwealth, include Canada, Australia and New Zealand as designated countries at Stage Two of the PCT process, but the extra attorney fees may be hard to justify. You certainly won’t get as much “bang for your buck” from them as your US patent agent or attorney will deliver.

Japan is usually a good market but few SMEs can access it cost-effectively. Attorney fees are high and, of course, translation costs. That alone is not enough to turn your back on Japan. The difficulty with Japan is not the cost of getting a Japanese patent but in profiting from it. I have been stymied by the need to have a Japanese associate on our team to operate there. Japan has a kind of “good ol’ boys” network and legal requirements that makes it difficult to do anything profitable in Japan without a Japanese partner.
A partner in a land as foreign as Japan is a good thing but good partners are hard to find and SMEs often lack the connections and scale to operate efficiently in Japan.
Note: My background is in Life Sciences. Other high techs (IT, electronics, etc.) may face lower barriers than I have.
The annual patent Maintenance Fees must be paid by a Japanese lawyer – and this might be the only reason to employ companies like CPA global.

I have limited experience with BRIC and suggest caution. Each has its own opportunities and threats. The opportunities will depend mostly upon the specifics of your IP but most of the threats are general enough that they can be summarised (here).

Brazil has a backlog of applications and has hired extra examiners but “The patent registration process may take as long as eight years” ("Intellectual Property Rights in Brazil"

The only Russian application I've worked with was awarded “immediately” and without any push back in spite of its broad claims which were (rightfully) whittled down by every other patent office. Our investor owned a company in Russia in the same technology space but showed no interest in commercialising this IP. A couple years later, over sandwiches and drinks at a conference, I ran into a VC from Russia so I said, “Ah, we have a strong Russian patent.” to which he replied “Worthless!” I've been told that “infringement in Russia means different things to different people” and, when I pressed for details was told “it doesn't depend on what is infringe but who is infringed.”

India? “A major cause for concern in enforcement is bureaucratic delay, with a backlog of cases at both the civil and criminal courts. This means that cases can run for five years or more. There is also a lack of transparency, particularly at a local level. A significant feature of the IP environment in India is the large number of small players infringing IP rights. This means that seizures tend to be small, which requires a sustained and financially draining effort in order to make an impact.” ("Intellectual Property Rights in India"

One company I worked for was owned by a Chinese conglomerate so I was not surprised to see a few Chinese patents in our portfolio. I was surprised that our (Chinese) CEO was not interested in commercialising them. "Intellectual Property Rights in China” ( explains that “Some UK patent and trade mark attorneys can cover China. However, foreign law companies are not allowed to practice Chinese law directly - they can only do so by ‘entrusting’ Chinese law firms … There is a difference between having adequate laws and achieving their effective enforcement. … Illegal economic activities like counterfeiting and other forms of IP infringement have been a familiar repercussion of many nations’ economic development. In China’s case, changes have been particularly rapid, which has caused some real problems in IP enforcement.”

It's a big world but don't let that distract you from your goal.

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(© Dr Jamie Love 2015)