Recommendations to inventors on choosing countries for foreign patenting

Why is a preliminary analysis required when making a decision to patent a technical solution abroad?

For a better understanding and answer to the above question, let's consider the main difficulties that applicants face when obtaining patents abroad:

• Significant costs for state fees and lawyers' fees;
• Complex cost structure that includes many components;
• Over time, the overall structure of the costs of maintaining the patent portfolio undergoes changes;
• Long and multi-stage process of obtaining a patent;
• The need to conduct separate cases in each patent office, complying with their norms, requirements and time frames;
• The time required to obtain a patent can be several years, in particular, paperwork in Egypt, Brazil, Indonesia takes from 5 to 10 years;
• Regular maintenance of applications, in particular in European countries, and valid patents for a long period is required;
• Each application submitted entails financial obligations over many years, hence the following cost items: remuneration of authors; preparation of the application; state fees; payment for the services of local patent attorneys; translation of application documents; notary services, legalization; maintenance of application/patent validity; additional costs (sending, sending documents).

As a result of the lack of a structured approach and ignorance of local patent legislation and the nuances associated with office work, the applicant may face the following problems:

• Delays or even missed opportunity to obtain a patent;
• Uncontrolled increase in costs.

Taking into account the different effectiveness of legal systems, a balanced and competent approach is required when determining states for patenting.

Approach to developing a strategy for selecting countries for foreign patenting

To begin with, it is necessary to assess the importance and necessity of each specific patent from the available portfolio. To do this, we recommend introducing a ranking system: minor improvements in the patent correspond to the selection of a minimum number of states, significant improvements correspond to the standard set of countries, and breakthrough innovative solutions imply an additional choice of countries to the standard set.

Selection stages

When determining a standard set of states for patenting, it is advisable to take into account the importance of each jurisdiction for the company's activities, as well as the costs and difficulties associated with obtaining and maintaining patent protection:

1. Creation of a preliminary list of states;
2. Primary filtration;
3. Detailed study.

The determination of the provisional list of states includes an analysis of:

1. States of interest for the sale of current and future products;
2. Jurisdictions where production sites (or data centers) are located;
3. States in which suppliers and manufacturers are located;
4. Geographical location of the main competitors.

Primary filtration

As there is no universal ranking of states covering the following parameters and providing data for all states, the following should be taken into account. The likelihood of obtaining a patent and its value to the applicant is affected by a number of jurisdiction-specific aspects:

• financial costs;
• administrative obstacles;
• the duration of the examination of applications;
• the quality of work of patent authorities and courts.

The volume of patent applications filed annually can serve as an effective indicator for assessing a country (statistics are available for most countries in the WIPO Intellectual Property Data Center).

For a more accurate comparison, it is recommended to conduct an analysis in the context of large regions, which allows you to identify the most successful jurisdictions.

Detailed study

Based on the results of the previous stage, a list of promising states suitable for the declared parameters should be formed for each region.

When analyzing each state, it is necessary to take into account:

• Possibility of using regional patenting procedures instead of national ones;
• Financial costs (state fees and payment for the services of patent attorneys);
• Costs and requirements related to the translation of documentation;
• Administrative difficulties (notarization, apostille/consular legalization, the need for an original signature on documents, etc);
• Average time for examination of an application (information is available in the WIPO Intellectual Property Data Center);
• The presence of sanctions and other restrictions and other significant information.

It should be borne in mind that having developed a system for choosing the geography of patenting and having worked out the processes for standard sets of states, it is necessary to periodically update it and make changes to the list.

Example of the result of applying the recommended strategy

According to the proposed strategy for ranking patents, most large legal entities with an impressive portfolio of intellectual property objects choose:

• if the patented technical solution contains minor improvements in the patent – patenting only in the Russian Federation or the EAEU or Kazakhstan or the Republic of Belarus separately;
• if the patented technical solution contains significant improvements – a standard set of economically developed countries: the USA, Europe, China, Japan, South Korea;
• if the patented technical solution is a breakthrough innovation, other large and hypothetically promising jurisdictions, for example, Australia, Canada, New Zealand, are added to the standard set.