As mentioned in an earlier blog, many businesses are unaware of the need and/or are unfamiliar with the procedures to extend patent rights outside the United States. This article describes some factors characteristic of the invention itself that one may consider when making the important decision to file for patent protection in foreign countries.
Before initiating a time consuming and expensive patent application process in a foreign country, the inventor should consider the nature, scope, and application of the patented invention itself.
For example, the patent owner may consider the technical complexity of the invention. By definition, the published application that led to a patent grant in the United States describes how to practice the invention in sufficient detail as to be understood by someone of skill in the art. But if the invention is nonetheless difficult to copy in a country less technologically advanced than the United States, then perhaps patent protection to block a competitor’s ability to develop a competing product in such a country would be of limited value.
Similarly, the patent owner may consider the breadth of the claims that define the subject matter that the owner regards as her invention. Generally, narrower claims translate in a narrower right to exclude. Broader claims may be of more business value as they are more difficult for a potential competitor in the foreign market to design around.
Lastly, before filing for a foreign grant of patent, the owner may consider the value of the invention, and the projected duration of that value. Pertinent questions to ask oneself include “Of what value is this invention to the company? To its anticipated foreign competition? To the targeted foreign marketplace?” Relatedly, the owner should consider the projected lifespan of the invention. For example, the value of an invention often is expected to persist less than its entire foreign patent term. In this case (and, for that matter, in nearly every case), a cost-benefit analysis of pursuing foreign patent protection may be in order.
