Strategies for Cost-effective Patent Management

Blog    August 1, 2019
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Intellectual Property

In the antagonism of budget cuts, there is an enormous pressure on the Intellectual Property (IP) and finance teams of innovative companies to obtain strong patents year after year. Moreover, many people often wish to get patent rights for their unique ideas and inventions in almost every country of the world, but seeing the cost involved, they find it difficult. That’s why; it is of paramount significance for them to use cost-effective strategies and obtain patent protection while keeping their patenting budget under control.

Here are some strategies effective in controlling costs not just at the initial stage of patent filing but also throughout the patent lifecycle.

  1. Do your homework before deciding about the nation for patent filing

Our IP industry doesn’t hold anything, like ‘International Patent’ or ‘World Patent.’ It means no single patent alone can safeguard an invention in all the countries worldwide. To obtain patent protection in a country, one needs to file the Patent Application in that particular nation. Therefore, the first step of this strategic approach involves a market assessment of the location of manufacturing centers, product potential, growth of technology within the lifecycle of the patent, nature of the invention, the enforceability of patents, competitors and their filing strategies. Besides, it is vital to understand what various jurisdictions allow to be patented or not patented. For instance – as per the Patent Law of Europe, India, and Canada, the methods of treatment or diagnosis are not patentable.

  1. Go-green, i.e., prefer e-filing services

IP offices of several countries, like India, Australia, Malaysia, Japan, and Brazil are intending to improve their carbon footprints, cut costs, and enhance efficiency, and therefore, proffer e-filing services at preferential rates. It is better to prefer these services while filing for a patent.

  1. Consider translation costs

Translation costs often come into the picture at the time of:

  • Filing or prosecuting a patent application in jurisdictions where English is not an official language.
  • Validating a granted European patent in specific EPO member states.
  • Allowance of a European patent.

You can easily manage or reduce translation costs by focusing on the English language jurisdictions, effective patent drafting, and removing redundant texts from your patent specifications.

  1. Emphasize variations in fee

The fee of patenting varies according to the jurisdictions and the number of claims in an application. Claims in your patent application can affect the fee at the time of filing it, requesting its examination, and maintaining its validity. Therefore, merging multiple claims into one that acts as a dependant form of all merged claims along with deleting those that hold high probabilities of refusal and limited value are beneficial.

  1. Use the PCT (Patent Cooperation Treaty)

PCT enables the applicant to file an international patent application, which is accepted by 150 countries across the world. It then helps him to defer the costs of filing national phase applications in different nations by near about 30 months from the date of the first filing.

  1. Be wise while selecting search and examination authority

Filing a patent application under PCT involves choosing ISA (International Searching Authority) for undertaking prior art search to determine the originality and inventiveness of the technology for which the applicant is seeking a patent. In the present times, there are twenty-two patent offices that operate as ISAs. The selection of ISA depends on the jurisdiction in which the inventor first filed his application. However, in general, it is suggested to choose the ISA located in the region where you intend to file a national phase patent. Apart from the location, the speed with which different ISAs generate reports and the quality of reports are also some vital things to consider while selecting an ISA.

  1. File request for examination while filing your application

It is recommended to file a request for examination along with your patent application. Such an approach can help you in saving both the money and the time in jurisdictions, like India, which follows a deferred system of testing.

  1. Don’t forget about modified substantive examination option

Such an option, where the IP offices grant a patent even if it corresponds to one patented in another jurisdiction, is worthy to save a substantial amount on prosecution costs.

  1. Keep the supporting documents in order

Supporting documents, including assignment deeds, certified priority documents, etc., if kept handy aid in avoiding delays. As these delays can be costly and painful, ensure gathering all the supporting documentation as soon as possible.

  1. Take advantage of expedited processing option

Many national patent offices collaborate through PPH (Patent Prosecution Highway) to streamline and expedite the processing of patent applications. Don’t forget to take advantage of this option.

  1. Emphasize reducing the maintenance fee

By declaring your intention to license the patents to any willing third-party, you can obtain the benefits of the discounted maintenance fee.

  1. Focus on strategic abandonment

Strategic abandonment that generally increases the patent ages can result in substantial savings in the patent’s maintenance fees payable throughout its lifecycle.

Obtaining and maintaining a patent can put a tremendous strain on the finance teams as well as the financial resources of your firm. Hence, it is imperative to develop cost-effective strategies that support your business goals in the best possible way. For more visit: 

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