The patent filing process begins with the analysis of the patentability search and the decision to file. The patentability search reveals the closest art and provides information necessary to determine how broad the claims may be written. The goal is to obtain a patent with the broadest possible claims.
The drafting of the patent application is framed by the set of claims and includes a description of how to make and use the invention. The sections of the specification are:
B. Cross-reference to related applications
C. Statement regarding federally sponsored research (if applicable)
D. Background of the invention
E. Summary of the invention
F. Description of the drawings
G. Detailed description of the invention
Most patent applications include drawings and they must be prepared according to patent office requirements.
Patent protection is country specific so choices must be made concerning international and/or national filings.
There are also different types of patents applications depending on the country and the type of protection sought. Examples include:
- Continuation (CON, CIP and DIV)
- Patent of Invention (the same as non-provisional outside the US)
- Utility model (in some countries – improvement invention that is novel but does not show a significant inventive step)
For filings in countries outside of the United States, work is coordinated with attorneys in each country. National attorneys must be used to file in foreign patent offices. This work may be coordinated by a patent manager.
Strategies also include any of the following:
- Don’t file, just make it known publically through publication or sale so that no one else can file a patent application
- File a provisional application and then file a non-provisional or PCT application within a year
- File a PCT application for world-wide patent coverage and then file in selected counties before the end of 30 months
- File directly in selected countries
It must be kept in mind that patents are country-specific and not all countries are favorable for enforcing patents. Many people believe that they need coverage in all countries in which they do business but this may not be the case. The question to be answered is “How can the key markets be protected?”
For example the market to be protect should be considered. A product may be made in China but sold in the United States. A US patent would protect the large US market since the product could not be imported without infringement. If the product is not sold in China there is no need to have a patent there.
Another example would be the size of the market. In small European countries, the market may not be sufficiently large in certain countries to support the additional costs. A few key countries in Europe may be effective in protecting the European market without filing in numerous countries there.
Finally, one should consider the efficiency of the patent system and the rates of effectiveness in dealing with infringement cases. The University of Liverpool has created an Index of Patent System Strength to assist in making filing decisions.
The Index of Patent Systems Strength is an annual composite index that rates the effectiveness and efficiency of the patent systems of 49 countries. The updated index is developed by Dr Nikolaos Papageorgiadis and Dr Konstantinos Alexiou based on the methodology by Papageorgiadis, Cross & Alexiou (2014) published at the Journal of World Business.
At https://www.liverpool.ac.uk/management/research/projects/patent-systems/ you will find an interactive tool that allows you to compare how each country ranked between 1998 and 2015 and create and export visualisations to use in reports or presentations. Here is the current state of patent enforcement around the world.
For more details see 2014-2015 Ratings
As you can see, there are many factors that come into play in developing a filing strategy. A patent professional can assist you in developing the strategy that is best for you.