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How foreign filings can go wrong

When you file patents outside the US that correspond to the patents you are already filing in the US you can add significant value to the applicant’s portfolio very cost-effectively. The applicant gains rights in large markets that may be as valuable if not more valuable as the rights in the US, depending on the product, competitors, and market forces (see this post for an example of why you should file abroad“).

This increased geographic scope of patents can also be a very effective way to add value to your practice – you are adding value to the applicants’ portfolio cost-effectively, and this is something you can and should be rewarded for doing (whether you are inside or outside counsel).

However, not all foreign filings go smoothly. The most common problem is what I call the “death of 1,000 paper cuts”. Foreign filings rarely lurch sideways in one big mess. Instead, if they are not properly planned and implemented, it is the slow, steady accumulation of little things that must be attended to – often late, and in a rush – that gradually create client frustration. Each one of these late and unexpected little steps usually is accompanied by another invoice. And that, ultimately, puts the whole project behind schedule and over budget.

In subsequent posts I will talk about how to avoid this problem. In a nutshell, the solution is to ensure that all stakeholders have shared expectations (about cost, timing, and substantive success), that there is a good plan for execution, and that the right people put the right amount of attention into implementing the plan efficiently and effectively. Foreign filings are not a black art – pulling them off properly just requires a little know-how, some planning, and timely attention to detail.

As always, I look forward to your comments.



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Foreign Filings

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