If you were unable to join us in person at IPWatchdog Studios for Patent Prosecution & Portfolio Management Masters™ 2023, a part of the IPWatchdog Masters™ series, register now to watch the broadcast of the Best Practices for Building a Worldwide Patent Portfolio panel. This conversation was recorded June 21, 2023.

For many companies, the best course of action when seeking to obtain worldwide patent protection is to file an International Application under the Patent Cooperation Treaty. This strategy puts off decision-making for up to 30 months after filing the PCT application and leaves virtually all doors open. However, the PCT process is not cheap, and it can be more economical to pursue patent protection directly, particularly when protection is only necessary in a few countries.

Regardless of whether the PCT process is used to streamline portfolio building, or earlier filing dates are merely relied upon in domestic filings under the Paris Convention, potentially serious pitfalls await those not considering the substantive laws in countries where they may want, or need, protection. One such example relates to inventorship, which is a real requirement in the United States, but not elsewhere. Because the initial filing date is so consequentially important, and some problems simply cannot be fixed later, what safeguards should be put in place to mitigate against preventable disaster that may not become evident until M&A or enforcement due diligence?

With an eye toward budgetary concerns and guarding against the numerous pitfalls that lurk when building a worldwide portfolio, this panel will discuss the topic of best practices for building the global patent portfolio that you want, need, and can afford. The panel will also address:

• Identifying countries where patents will be sought, and only seeking protection in countries where there is an articulable business strategy.
• Cost considerations for obtaining and maintaining a patent throughout its enforcement lifetime.
• Weighing the rights granted against enforcement prospects to determine if there is a meaningful enforcement mechanism available to stop infringement.
• The numerous pitfalls that may be difficult (or even impossible) to correct, which lurk in the shadows, including non-strategic use of incorporation by reference, reference filing, translation errors, inventorship issues, and otherwise ensuring (to the greatest extent possible) that the first filing (wherever that is made) will actually be a useful priority document.

Materials:

PCT Basics: Understanding the International Filing Process

Why It’s Time to Board the PCT Train: The Benefits of Filing U.S. Patent Applications via the PCT First

Time to ‘Think PCT’: Rethink Your Global Patent Strategy to Preserve Your Seat at the Table