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Part II of III: Where to enter national phase?

Part II of III: Where to enter national phase?

Part II: Where to enter national phase?   Competition Where are the applicant’s competitors operating? Particularly in high-tech and fast-moving fields, markets are far from established, and you may not yet be competing directly with your competitors in some markets. Don’t wait until you’re both there slugging it out to consider extending patent protection into […]

Part I of III: Where to enter national phase?

Part I of III: Where to enter national phase?

You know the story: about 18 months ago you filed a PCT application designating over 130 countries and regions. Now national phase deadlines are fast approaching and you or your client needs to make a decision about which countries and regions should be kept alive by entering the national/regional phase. Going into all countries would […]

Various Countries, Various Claims Issues

Various Countries, Various Claims Issues

The types of claim amendments and additions that can be made vary radically from country to country. For example, Korea is very restrictive about claim amendments, and you can assume that broadening claim amendments will be rejected. In Korea, it was necessary for our client (see prior blog post) to enter the national phase individually […]

Saving Money With Co-Pending PCT Applications

Saving Money With Co-Pending PCT Applications

Believe it or not, in some cases it can make good financial sense to let co-pending PCT applications lapse. It must be remembered that a PCT application is actually a bundle of national applications. This means that all the advantages and disadvantages of individual countries’ patent systems need to be taken into account when amending […]

Minimize Costs When Instructing Patent Attorneys

Minimize Costs When Instructing Patent Attorneys

As providers of services on a time basis, patent attorneys and agents should know better than most (with the exception of their clients, of course!) that time is money. So here it is: The Completely Obvious Guide to Minimizing Costs When Instructing a Patent Attorney    1. As far as possible, send everything at once […]

Rule 7: Bring tasks in-house, or outsource!

Rule 7: Bring tasks in-house, or outsource!

Rule 7 of 7 When you look at organizations with larger portfolios a pattern emerges: IP functions begin to be taken in-house. Given sufficient volume it often makes more financial sense to pay in-house paralegal or patent attorney salaries than to pay the hourly rates charged by patent firms. However, a sense of balance needs […]

Rule 6: Consolidate providers

Rule 6: Consolidate providers

Rule 6 of 7 Selecting only one or two providers to handle your patent work can sometimes increase your buying power, giving you more favorable rates. Asking those providers to use the same foreign attorneys (ideally with whom favorable rates have also been negotiated) for all your work can help too. In general, if you […]

Rule 5: Batch file to create economies of scale

Rule 5: Batch file to create economies of scale

Rule 5 of 7 If you have multiple filings due in a given month or quarter then do a batch filing to maximize efficiency and minimize costs. And don’t be afraid to ask your patent attorney for a discount if you can instruct a significant number of cases simultaneously! The same goes for external service […]

Rule 4: Choose a foreign filing service that’s on your side

Rule 4: Choose a foreign filing service that’s on your side

Rule 4 of 7 Many patent applicants and attorneys don’t realize that there is choice available as to who to use for the foreign-filing component of the patent process. The emergence of specialist foreign patent filing providers utilizing technology and purchasing power has created significant efficiencies that translate into cost and time savings for patent […]

Rule 3: Ace the patent application process

Rule 3: Ace the patent application process

Rule 3 of 7 Sometimes it is not only what you do right but what you don’t do wrong that counts! Plan your decision-making and funding processes to ensure instructions are sent well ahead of deadlines. This will avoid translation urgency fees, and late fees for submitting executed powers of attorney and assignments (where required). […]

Rule 2: Select countries intelligently

Rule 2: Select countries intelligently

Rule 2 of 7 Before selecting countries, do your homework on the competitive landscape, market opportunities and IP system that each potential jurisdiction offers. For consumer goods, first cover existing markets (typically including your home country if not already covered). For many products, that will mean the USA and Europe, possibly followed by secondary markets […]