In This Issue:
- Tips for Developing a Cost-Effective Foreign Patent Strategy
- Supreme Court Holds that Trademark Tacking Should be Decided by a Jury in Hana Financial, Inc. v. Hana Bank
- Amending Claims Before the PTAB: What Have We Learned From the Board?
- Proving Inherent Anticipation – Make or Break Your Case With Expert Testimony
- Post-Alice District Court Decisions Regarding the Patent Eligibility of Computer-Implemented Inventions
- Excerpt from Tips for Developing a Cost-Effective Foreign Patent Strategy:
According to a recent survey of over 100 companies and universities, nearly 93% who filed patent families in 2013 filed at least some of those patent families internationally.[1] While obtaining patent protection abroad is important in a global economy, obtaining international patent protection can be a substantial financial expense in addition to the legal and patent office fees that may have already been spent for preparing and prosecuting a U.S. patent application, which can average between $8,500 and $25,000.[2] Foreign patent filing decisions should take into account all of the potential additional costs associated with filing, prosecution, and annuity fees, as well as translation and legal service costs for hiring patent practitioners in each jurisdiction. Global filing, prosecution, and annuity estimates over the lifetime of a patent application can be generated on a country-by-country basis; however, the actual costs can change over time and with currency fluctuations. Furthermore, it may take several years after filing a foreign patent application before a patent actually issues. Unfortunately, foreign patent protection can be quite expensive, with the varying costs easily totaling in the thousands of dollars for each application. Since the costs associated with filing and obtaining foreign patent protection are significant, strategies that control, delay, consolidate, or minimize costs are advantageous. In this article, five tips are discussed for developing a cost-effective strategy for obtaining foreign patent protection.
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