Thought Leadership » Five Ways to Make Your Global Patent Prosecution Strategies More Efficient

Five Ways to Make Your Global Patent Prosecution Strategies More Efficient

By Chris K. Miller

compass pointing to patent, patent efficiency concept

Chris K. Miller is a principal in the Dallas office of Harness IP. He represents corporate legal teams, business owners and in-house counsel to obtain intellectual property protection in the United States and abroad.

December 20, 2023

General counsel know that it takes a lot of attorney time and expense to maintain a patent portfolio, so here are five best practices to consider when assessing a global patent portfolio and filing practices:

1. Start with “Universal” Patent Application Disclosures

Patents are tied to specific national jurisdictions and their rules, so prepare a “universal” application that addresses considerations of all jurisdictions where a company intends to file. Information prepared for this internal-use only application can then be massaged for national filings and will clarify what is important. Although functional language in an application describing how a device operates is useful, companies should not focus exclusively on functionality but should also describe the specific structure, features, compositions and steps required to solve the problem the invention addresses.

Functional language should explain the interrelationship of the components of an invention so that it’s understandable. A universal application drafted in this manner should provide sufficient detail to meet requirements common to all jurisdictions. That foundation will make it easier to coordinate filings in various jurisdictions and increase the chances of successfully obtaining a patent.

2. Take Advantage of the Patent Cooperation Treaty

The international Patent Cooperation Treaty (PCT) application provides the benefit of a preliminary examination that may carry weight with national authorities later in the patent process. It also gives an objective view of the application’s strength and where and what features of the invention are most advantageous. Filing preserves a date for initial rights and then provides a delay of about 30 months to file nationally. This timeout in the filing process allows companies to look at their patent position in member nations, spread out filing costs, and continue testing the product and the market. The idea is to get a filing date for the application disclosure first and use the delay to form an international strategy.

3. Know National Entry Formalities and Deadlines for Exam Fees

There are differences in jurisdictions over how many claims are included in the filing fee for a patent application and whether they carry additional fees. It’s common to pay $100 or more for each claim over 20. However, if you have 100 claims and your claim strategy is not focused, this becomes quite expensive. If prior art dilutes the claim, move on to better claims, which should be supported by a well-drafted application disclosure. The formalities of each jurisdiction vary considerably, so cull and rephrase claims as needed to target cost efficiencies. A jurisdiction that charges exorbitant fees for claims can be expensive, especially if you must pay them multiple times throughout the patent’s life cycle.

4. Identify Jurisdictional Rules and Strategy for Continuing Applications

Continuation and divisional applications are among the most valuable tools for developing an effective patent portfolio. With proper support from a well-drafted application disclosure, they essentially allow patent holders to add or modify claims to the original patent following the evolution of technology and changes in business strategy. Generally, continuing applications can be filed as long as one patent application in a family is pending. This is a relatively inexpensive way for a company to maintain its grip on a product or technology. However, what it means for an application to be “pending” varies considerably by jurisdiction and is a key factor in formulating an effective continuation and divisional strategy.   

5. Watch Annuities and Maintenance Fees

Chip away at the fees that are due on the patents in your portfolio, which are calculated and paid based on the national jurisdiction. The bottom line is to pursue a patent strategy of quality, not quantity. As markets and technology change, there will be patents that have marginal value because they have outlived their relevance or have become vulnerable to invalidity. Depending on the jurisdiction, fees may be controlled in various ways through abandonment, claim cancellations and refocusing claim strategy.

It is critical to have a process for tracking whether the information in a patent portfolio is relevant to current or future product development. Changes in staff over the years, mergers, the sale of portfolios and heavy workloads may create a situation where a legal department does not know the details of what it is maintaining. Instituting a process for tracking and evaluating all aspects of a global portfolio yields cost savings over time as well as insights into how to position a portfolio’s assets.

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