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 like Canada or Australia.

The so-called “BRICK” countries (Brazil, Russia, India, China and Korea) have large and growing populations. The growth of the middle class in India and China alone makes them worthy of consideration. Even if the current market for your product isn’t huge, a patent lasts 20 years, and that’s a long time given the rate of demographic change in those countries.

Markets where distribution or licensing opportunities are likely should be next on your agenda. You might, for example, have contacts in certain countries that might lead to licensing opportunities over time. Certainly it is preferable to pursue such countries before considering those in which you have no contacts and little prospect of making any.

Manufacturing jurisdictions can then be considered. The reason for considering them less important (in relative terms) is that it’s often relatively easy for potential competitors to avoid protection in a given country by having a product manufactured in another country where there’s no patent protection.

For a relatively simple consumer product, it may be impractical to cover all jurisdictions where the product could theoretically be manufactured.

There is also the issue of detection: is it going to be easy – or even possible – in a particular jurisdiction to determine where goods are being made? Is the enforcement system effective and not too costly? There’s no point having a patent if it’s impractical to use it against an infringer due to the local legal system not being up to the task!

Of course, there are some technologies where it may be practical and desirable to get patent coverage in manufacturing jurisdictions. An example is certain types of integrated circuit that can only be fabricated in a limited number of fabrication plants, most of which are located in a small number of Asian countries. In that case, it may be practical and commercially useful to obtain patent protection in all those countries.

Of course, if your technology is not consumer-related, you should cover whichever jurisdictions make the most sense to your business. Suitable jurisdictions for mining roof bolts may be distinctly different to those for a pharmaceutical composition!

Photo credit: cuppojoe


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