By: Ryan De Vries
Not sure where or how to file your patent or trademark? Consider these 4 expert tips to make the best decision for your business:
The prospect of owning exclusive rights to an invention or brand is enticing for many businesses, and perhaps more so for their investors. For many businesses, these exclusive rights and the pricing power exclusivity provides are the justification for investing heavily into the development or marketing of products or services.
While there are costs involved in filing and maintaining applications and granted intellectual property rights, intellectual property protection is often a key part of successful businesses. But how do you best determine where to file? You can ask for advice from an experienced patent and trademark agent like Heer Law or you can consider the next steps on your own.
#1 Consider Your Primary Commercial Markets
Since it is much more difficult for a competitor to change the primary commercial markets for an inventive new product than to move the location it is manufactured, many inventors and business pursue patent and trademark rights in the most profitable jurisdictions in which they plan to sell.
For instance, if an inventor wishes to keep a competitor from selling their invention in Europe, they need a patent that has been granted by the European Patent Office. This exclusive right applies regardless of where the competitor’s product is made. Similarly, trademark rights extend to restrain a competitor’s use of a registered mark or confusingly similar marks, and this is most valuable in the commercial markets which are most profitable to you.
#2 Consider Your Future Markets
In an age of eCommerce and increasing ease in shipping and delivery, many businesses which currently focus on a particular jurisdiction are likely to expand their sales into additional markets. Patents generally last from their date of grant to twenty years from filing, and trademark rights can last indefinitely as long as there continues to be a use of the registered mark.
These time periods mean that expansion plans which may seem distant could benefit significantly from choosing to file patent and trademark applications in those jurisdictions now. Moreover, even if a business is not able to bring its product to market in a particular jurisdiction itself, there may be an opportunity to license rights to businesses already operating in that jurisdiction if the exclusive rights would be valuable to them.
#3 Maximize Value In Obtaining Rights
While many government patent and trademark offices offer discounted fees for small or micro entities, in most cases government filing fees cannot be avoided entirely. If desired, other fees can be avoided or reduced through your filing strategy. Examples include translation costs, examination costs, and costs relating to the scope of an application.
Translating documents can be expensive. Particularly for long and detailed patent applications. Preparing your initial application in a common language like English is a good place to start as English is used by multiple patent offices. For example, if an application is drafted in English, it can be filed without a translation in 5 of the 10 most active patent offices: the United States Patent and Trademark Office, the European Patent Office, the Indian Patent Office, the Canadian Intellectual Property Office, and IP Australia.
Once an application is filed, costs will arise in connection with the examination process. However, a strategic approach to requesting examination can minimize these costs. For example, Canada currently allows an applicant to wait up to five years before requesting examination. Thus, an applicant for a Canadian patent can often wait to request examination in Canada until a set of patent claims has been allowed in a counterpart application in the United States or elsewhere, and then voluntarily amend the Canadian claims to match the allowed claims. While the Canadian patent office would still examine the claims, such a move can avoid duplicating prosecution costs overcoming issues with the application raised by examiners in other jurisdictions.
You can also maximize value in obtaining trademark registrations by tailoring the number of classes of goods and services claimed in that jurisdiction in a manner specific to what you will profitably sell in association with the mark in that jurisdiction.
#4 A Window Of Opportunity
For many businesses, deciding where to file patent and trademark applications is a process which involves projecting the expected commercial success of a product or service in a particular market, developing a plan for expansion of the business, and monitoring the activities of competitors.
These things take time, and yet urgency in filing applications is also needed as intellectual property rights are typically granted on a first-to-file basis.
Fortunately, many jurisdictions allow applicants to make priority claims to their initial application within a 6 or 12-month time period. This allows subsequent applications to be treated as if they were filed on the date the initial application was filed. Typically, priority can be claimed up to one year for a patent application or six months for a trademark application.
This window can also be extended for many patent applications by the filing of an international patent application under the Patent Cooperation Treaty (PCT). A PCT patent application allows an applicant to file their application at the international level, and then enter into national or regional patent offices through national or regional phase entry filings. For most countries, the deadline to file national phase applications is 30 months from the earliest priority date. Some countries allow a late entry filing upon the payment of a late fee or meeting some other additional requirement which should be investigated if a 30-month deadline has unintentionally been missed.
Conclusion
A well-thought-out patent and trademark application strategy is essential in maximizing your return on investment in the exclusive rights. Understanding how best to use international and foreign patent and trademark systems will provide advantages to businesses in terms of staging expenses and more efficiently maximizing their intellectual property protection.
Source >> https://magazine.startus.cc/decide-where-file-your-patent-trademark-applications/
