Your German Partner for IP Prosecution, Litigation and Consulting in Europe

Patents are as individual as the inventions behind them. Hence, applying for a patent is a procedure individual to every case, adapting to every individual need. A large company might use a different patent strategy than a small or individual inventor. Here, we will discuss what small and medium-sized applicants can do to weigh costs against opportunities.

Laying the foundation - a basic strategy

To apply for a patent in as many countries as possible may be useful for a good invention. Unfortunately, this is also an expensive way, which is only worthwhile if the chances of obtaining a grant are good.

The chance to obtain a grant usually depends on the prior art available in the technical field. A personal search by the inventor can be the first step, but is rarely productive. Professional searches by a law firm or a search agent are very expensive, which makes them unattractive to smaller companies. An inexpensive way to get to know the state of the art before filing subsequent applications is the way via the German Patent and Trademark Office (GPTO). To obtain a search report as quickly as possible, the patent can first be filed at the GPTO. The GPTO offers a high-quality search and is also relatively inexpensive compared to the European Patent Office (EPO).  

If the search report indicates that the chances of success are low, the patent claims may have to be amended. If the search report is positive, or if amended documents promise a grant, the next step is a subsequent application for a patent on an international scale, e.g. at the European Patent Office (EPO), in order to obtain a patent in the European member states. An application under the Patent Cooperation Treaty (PCT), which is comparatively expensive, can then also be considered. At present (June 2020), 153 states participate in the PCT. The PCT application can later be nationalized in each of these 153 states, i.e. continued as a national application.

International patent protection thanks to territorial strategy

When a subsequent application for a patent is filed with the EPO or the PCT, the so-called priority right can be claimed. A subsequent application with priority right is treated as if it had been filed on the date of the priority application.

This has two advantages:

  1. A patent application can be extended internationally within 12 months from the date of the first application without having to consider prior art that has been developed in the meantime.
  2. Furthermore, applications can be carefully extended and adapted within the priority period under certain conditions.

Useful questions for applicants wondering where to file subsequent applications would be:

  • Where are my main sales markets? Which countries have the largest sales?
  • Which countries are not interesting as markets in their own right? Which countries do I have to cover so that it becomes unprofitable for competitors to operate in the countries without protection?
  • Where, if applicable, am I unable or unwilling to produce/sell products myself, but could grant licenses?
  • Where are the costs in poor relation to the achievable turnover (e.g. in the USA)?

In this case it is accordingly beneficial to support the filing strategy with market analysis methods. Thus it can be guaranteed that the patent application will only be continued in relevant countries.

I am looking forward to discussing your individual and most suitable application strategy for your future patent. After an initial discussion you will have clarity about possible approaches - free of charge, independent of location and without any obligation.  

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