Patent law varies with each country. A global patent filing strategy can be difficult to manage and expensive to implement. When considering where patents should be filed, entrepreneurs should carefully balance the cost of each application with the value of that invention for the overall business and the opportunities for that invention in each jurisdiction. Some practical considerations are discussed below:
Has the invention been publicly disclosed?
A disclosure of the invention, whether by the inventor or someone else, in any place in the world will prevent you from obtaining patent protection in most jurisdictions. This can affect your ability to obtain patent protection in some jurisdictions.
Certain countries, such as Canada and the United States, provide a grace period that allows an inventor to file a patent application within one year after the first public disclosure of the invention. Most jurisdictions, however, including Europe, Japan and China, do not offer such a grace period.
Is the invention core to your business?
One approach to balancing the scope of protection and the cost of obtaining that protection is to implement different filing strategies for different products or technology within the business.
For core inventions that will support important products, the company can use a comprehensive patent program. The comprehensive patent program will involve filing patent applications in all countries where sales, licensing and enforcement opportunities exist or will arise in the next 10 to 15 years.
For ancillary features that are innovative but not core to the company’s main products, the company can use a more restricted patent program.
Where is your business?
For technology entrepreneurs based in Canada, the United States is typically the best starting point, as it is relatively cost-effective and generally provides the most valuable patent in a patent family. Beyond the United States, Canadian entrepreneurs should file applications in the countries where the company does or will soon do business, where direct competitors do or will soon do business, and where monetization opportunities such as licensing are likely to arise. If there will be offshore manufacturing, consideration should be given to filing in those countries.
Where will your business be going?
When considering where these monetization opportunities may take place, it is recommended that the entrepreneur look forward at least 5 years, and possibly up to 10 years. In many cases, Canadian entrepreneurs will file in the United States, Canada, Europe and Australia to minimize translation fees, while still building an international patent portfolio that can support good protection for the company’s products and/or a strong licensing program.
A company’s patent strategy should evolve as it does. A startup may only be able to file its early patent applications in one or two countries, for example Canada and the United States. As the startup matures, its IP strategy should be re-evaluated as its business opportunities and funding may have grown such that filing more broadly is affordable and appropriate. A recommended practice is for a company to regularly review its IP strategy — at least every year — and each time any business circumstance changes.
Stephen Beney is a partner with Bereskin & Parr LLP and Head of the Medical Devices practice group. He focuses on diverse technologies, including: automotive; medical devices and imaging systems; electronic devices; communication systems; video and signal processing systems; mass spectrometry; solar power devices and systems; fuel cell technology; internet systems; business methods; and clean tech devices and systems.
Joanna Ma is an associate with Bereskin & Parr LLP. Her practice focuses on drafting and prosecuting patent applications related to software-based technologies, electrical innovations, and medical devices and applications. She enjoys learning about new technologies from inventors and advising clients on the development of an effective IP portfolio.