We all know one can never enjoy something that one does not have. It is literally true in case of patents. Patent rights are territorial in nature and can only be enjoyed in countries where one has filed an application for patent protection. The most common question that floods any patent applicants mind is whether they should file for patent protection outside the native country. If the answer is yes, how should they do it and where should they do it! Some key parameters that every applicant must consider while grappling with this question are:
- Budgetary constraints: A factor that governs all questions is the budget. After filing a patent application in the native country, international filing costs can vary from USD 1000 to USD 4000 per country. The costs involved in prosecution and maintenance can raise the costs significantly. Patent applicants therefore should balance the cost of filing in each country considering the benefits available to them by filing in that select country or losses that can result from not filing in that country and based on the analysis; select the countries where the costs are justified.
- Customer Base: A key reason to apply for patent protection is to protect the market share for a product or service. A country where substantial market-base or multiple of patent cost exists, is an ideal place where a patent application must be filed. However, patent applicants should balance market size against the practical realities of market opportunities. China and India are by far the world’s largest markets, but unless a company has the connections, expertise and resources to break into the Chinese or Indian market, a patent filing may be wasted in those countries.
- Competitors Hub: A patent provides exclusive rights to make, use and sell an invention. Often, a product may have a large market in one country, but manufacturing may occur in another country where costs are lower. Filing in countries where key competitors have their manufacturing operations can help an applicant stop infringement at its source.
- Source of Supply: if the applicant is under a contract to manufacture for an overseas market or entity, the supplier will be well-trained to manufacture the invention. The supplier and its personnel will gain expertise, and perhaps even have infrastructure in place that is especially suitable for the product. A patent will ensure that the supplier won’t continue to supply any of the invented product or service to others without authorization from the patentee.
- Regional Operations: A patent application in a country where expansion plans can be explored must be considered.
If a patent applicant intends to venture out to a new international market, the applicant must adopt a strategy for market entry. This is crucial as this will affect the entire marketing and business planning process of the invention. Any good patent attorney having the expertise and experience can help an applicant identify the countries where they ought to seek patent protection and therefore professional help in this regard must never be underestimated.
Authored by Nisha Kurian.
Patent Portfolio team head
Contributed with the support of Patents Portfolio division at BananaIP, India