Deciding where to file for patent protection is a critical part of an international patent filing strategy. It is important to understand that this decision should not be driven by cost considerations alone, although this can obviously impact on final decisions. Your international patent filing strategy should also support your business strategy for accessing international markets.

In general terms, there are two main approaches to an international filing strategy. The first approach is to file in as many countries as possible and try to get patent claims that are as wide as possible. This allows the maximum opportunities to licence and use the patented technology. The second approach is to file in specifically targeted countries and obtain narrow product-directed patent claims. This reduces the number of filings, reduces patent examination issues, and thus reduces overall patenting costs while still protecting the product in the key targeted markets.   

There will always be a tension between cost and an ideal international filing strategy, so it is important that you discuss the issues with your patent attorney. Because of this, the actual strategy you decide to use may be a combination of the two main approaches discussed above.

If you have questions about your international patent filing strategy please contact Jack Liu in Shanghai (jliu3@lushenglawyers.com) or Eric Chang in Beijing (echang@lushenglawyers.com).

Some of the issues that should be considered are discussed below.

1. The need to control manufacture and/or sale.

Filing in countries in which competitors can manufacture or sell a similar product successfully is a key consideration. Often a country is both a manufacturing centre and a key market (e.g. the USA or Germany). Sometimes a country may be either a manufacturing centre (e.g. Vietnam or Thailand) or a market (e.g. Switzerland) but not both. This consideration will, of course, depend on the nature of your business.

Filing in a country that is both a manufacturing centre and a key market will usually be your first choice. This protects the market in that country as well as market that could be supplied from that country.

Filing in a country that is a key market will protect the market in that country.

Filing in a country that is a manufacturing centre will preserve your ability to use that country as a manufacturing centre. This may force a competitor to go to another, hopefully more expensive, country to make a competing product. This will enhance your cost advantage in those countries you sell your product in but have not sought patent protection (usually secondary markets for your products).

2. A competitor’s main market or manufacturing base.

Filing in a competitor’s main manufacturing base should be considered even if you will not manufacture or sell your product in that country. This is because it will restrict your competitor’s ability to compete in your important markets.

Filing in a competitor’s main market is also important as it is likely to be one of your main markets as well. This will protect your product and, if it interferes with your competitor’s products, improve your market share. It may also create some negotiation leverage should that be needed in your future business relationships (see Issue 4. Licensing/Sale below).

3. Future markets.

This will depend on your business strategy about expanding into new markets. Patent protection lasts for 20 years so if there is a country or region that you see as a potential future market you should consider filing there.

4. Licensing/Sale.

If you have patent protection in a country you may choose not to sell your product in that country yourself. You can license another company to sell or make your product or you can sell your patent in that country to another company.

A licensing strategy can also include the use of a patent as leverage to obtain a licence from a competitor. A simple example of this would be where you want a licence from a competitor to use its patented technology in one country and that competitor wants a licence to use your patent technology in the same, or in another, country.