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
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
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
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
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
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
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" www.gov.uk/government/publications/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" www.gov.uk/government/publications/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” (www.gov.uk/government/publications/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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