Tuesday, November 6, 2012

In which countries should I file my patents?

galvanized bucketsI spend a lot of my time working with clients building strategic patent portfolios. I think of patents as business tools. If they are created and used strategically they can help a patent owner achieve strategic and tactical business objectives. This of course means that the patent portfolio needs to be aligned with global business objectives.

Tough choices

It is not cost-effective to patent every invention in every country. We need to make tough decisions in order to allocate available resources. Some people compare these decisions to drowning puppies. Hard to do at the time, but a necessary thing to do long term.

There are tough decisions to be made all the time. Should you file a patent application at all for that new invention? In which countries should you file patent applications? Which patent applications should you abandon? Which issued patents should you maintain?

What we are trying to do here is simple. We want to put in place the right patents in the right places. Getting there is the tricky part.

Three buckets

One way of developing a good patenting strategy is to think like a global business leader thinks. Patents in a global portfolio are a series of CAPEX investments in countries where patent rights are pursued, obtained and maintained. The goal is to maximize the return on those investments in terms of value to the business.

Country selections can be viewed as a set of buckets that are grouped to define the different business approaches to the countries in each bucket.

The first bucket typically includes developed countries and regions such as the United States, the EPO and Japan. The business strategy here might be to drive innovation.

Next there are the BRIC countries. BRIC refers to Brazil, Russia, India and China. They are all thought to be at a similar stage of newly-advanced economic development. The expectation is that business interests in these countries are likely to expand during the patent term. The business strategy here is to accelerate penetration and localization.

The third bucket includes developing countries with high growth potential. Here the business strategy might be to build strength. There are a few ways to identify these countries. Some people refer to the Next Eleven (N-11) countries - Bangladesh, Egypt, Indonesia, Iran, Mexico, Nigeria, Pakistan, Philippines, Turkey, South Korea and Vietnam. Others prefer to think of Global Growth Generators (3G) countries - Bangladesh, China, Egypt, India, Indonesia, Iraq, Mongolia, Nigeria, Philippines, Sri Lanka and Vietnam.

A targeted approach

It's one thing to work out which countries you are going to include in each of your buckets. It's quite a another to work out which inventions to cover where.

I recently attended the AIPLA annual meeting at which the Chief Intellectual Property Counsel of a multinational outlined a possible patenting strategy for each bucket.

The strategy of innovation in the 'developed countries' bucket may require targeted filings of patents on fundamental technology in those countries. This might mean less coverage of product-based applications of those technologies in developed countries, in order to save resources better deployed in one of the other two country buckets.

For the 'BRIC' bucket it may be prudent to seek more targeted, narrow, product-focused patent claims to protect the products customised for local markets in the BRIC countries. There may be an emphasis on obtaining quick issuance of “picture claims” directed to your products. You may also have a portfolio of utility models to bolster the strategy of product-focused intellectual property protection.

The 'developing countries' bucket may require a different approach again. Business in those countries may still be a way off, so widespread attempts to obtain patents in those countries would be premature. There may be some countries within the bucket where it is time to begin a modest effort at patent portfolio building with an eye to future, longer-term business protection or enforcement opportunities.


There is no holy grail. There is no secret sauce. The main point is that the patent portfolio must remain aligned with the business strategy. Only then can it serve as an effective and valued tool that materially supports and advances business objectives in the markets of interest.

Photo courtesy of author Maker Mama under Creative Commons licence.

No comments:

Post a Comment

Related Posts Plugin for WordPress, Blogger...