Mastering the art of patent filing: key aspects of patenting inventions abroad

Despite these obstacles, it is possible to simplify international patent filing by breaking down the task into nine distinct steps. Take a look at what applicants of all kinds should know when protecting inventions abroad.

1: Start with a well-defined budget

Patenting inventions abroad can be expensive. Even if some jurisdictions offer discounts on official fees for individual or SME applicants, additional costs frequently arise, especially if the filing is urgent or the patent application needs to be translated. 

For these reasons and many more, a well-defined budget must be your first step in any patent filing strategy. The key is considering the process's entire timeline, factoring in costs for legal services as well as those from the drafting to prosecution / grant stages. Also, remember that in all jurisdictions, you must pay renewal fees to maintain your patent. At the European Patent Office (EPO), these take the form of annuities, while at the United States Patent and Trademark Office (USPTO), renewals are payable without a surcharge at a schedule of 3 - 3.5 years, 7 - 7.5 years and 11 - 11.5 years after issuance.

2: Choose the protection territory carefully

Patents are territorial rights; they have effect only in the jurisdictions that have granted them. Therefore, choosing where to prioritize protection for your invention is crucial and should involve analyzing market size, manufacturing and sales locations, competitor activity and future market expansion. 

Expert tip: Determine your international patent route clearly and early. Doing so helps minimize the risk of "missing out" on a country that could become a strategic arena later — for example, one in which a competitor establishes a major manufacturing site.

3: Take advantage of international agreements when possible

The Patent Cooperation Treaty and Paris Convention are two international agreements that benefit applicants. This is particularly true if you seek protection in many countries simultaneously — such as when the geographical scope for commercializing your product is not finalized.

In this case, the Paris Convention would require multiple national applications and impose a 12-month limitation on additional strategic moves. Filing a single Patent Cooperation Treaty application is more prudent, allowing you to designate up to 158 contracting states and maintain the right to pivot to national and regional protections for a period of 30 months from the priority date.

Expert tip: When listing the countries for your patent plan, check for membership in these international treaties.

4: Manage deadlines effectively

There are several main deadlines in patent filing, including those concerning translations or specific Intellectual Property (IP) forms; these should be reported by your local representative. However, others must be woven into your filing strategy from an early stage simply because they define how and when you can take the steps that follow. For example, the Paris Convention establishes that your patent will have the "right of priority" for up to 12 months, meaning that during this window, subsequent filings for patent protection in other contracting states will be treated as though they were submitted at the same time as the first application.

5: Expect formalities

Depending on the country, patent filing may be subject to additional formalities. For an application to be processed, it may need to be accompanied by anything from a Power of Attorney to a certified copy of the priority document in scanned or original format. If translations are involved, patent offices may also require quality statements to ensure the language is accurate.

6: Beware of unnecessary expenses

Avoidable costs generally include professional service fees incurred when you send instructions to your representative at the last minute or file certain forms after submitting an application (for example, upon receiving a formal office action). Under the Patent Cooperation Treaty, some jurisdictions also apply surcharges for late entry into the national phase.

You can — and should — avoid these superfluous costs by sending instructions to your representative well before the first official deadline. It is also vital to remain highly responsive during this stage, as open communication can help identify potential pitfalls.

7: Customize workflows with your representative

If you intend to manage patents across different jurisdictions, you may choose to engage an IP law firm to file your patent applications. These legal representatives combine regulatory expertise with a vast network of worldwide associates, making them a valuable resource in building your IP strategy.

However, to get the most out of IP services, it is important to establish detailed, customized working instructions. This helps ensure high-quality work, a secure strategy for patent applications and smooth communication. IP management software often facilitates this relationship by automatically generating templates, calculating and tracking deadlines, organizing tasks and more. Such tools are especially beneficial when managing large or international patent portfolios.

8: Be open and responsive

After the formalities are satisfied and filing is complete, a patent office will issue the official patent application number. Your next step is to request an examination (unless you did so at the time of filing or the jurisdiction does not carry out a substantive examination). A patent office examiner will review your application's claims based on novelty, inventive step and industrial applicability. If they identify issues that would prevent patenting, they will issue an "office action" to you or your representative.

This stage is essential, as the quality of your response plays a significant role in determining whether your patent will be granted. Hence, it is often wise to prioritize the support of an experienced patent attorney skilled in the invention's technical field.

9: Look for new solutions

As the landscape of patent filings continues to evolve, staying informed and adapting to changes is decisive. Having the right strategies and resources can help bring your strategy to completion, especially if you choose solutions designed to make your efforts more efficient, effective and streamlined.

This is why the Dennemeyer team is developing an application that allows clients to preview costs and place instructions with us as their representatives. In the beta version, users will enter the publication number of a Patent Cooperation Treaty application and automatically receive cost estimates for entering the national phase of the most frequently instructed jurisdictions. 

Our team knows that international patent filing requires advanced legal knowledge and excellent applicant-representative coordination. We believe nothing should be left to chance, especially when it comes to strict deadlines, jurisdictional variations and the impact a good IP strategy can have on worldwide innovation. The Dennemeyer commitment to operational excellence is just one more way we support our clients and their business prospects.

Streamline and support your international patent strategy

With local offices on six continents and an international audited network of agents, Dennemeyer & Associates provides services for smooth, centralized patent filing worldwide. Our colleagues can assist you whether you want to apply for patents in Japan, South Africa, Australia or even the Bahamas. Additionally, our experience handling large volumes of patent applications has helped us achieve exemplary customer satisfaction time after time.

Want to learn more about our representative services? Contact us today to take the first step in streamlining your international patent strategy.