The Importance of Patent Strategy

Once you file an application that gives your invention a priority date, be it a provisional, non-provisional, PCT or other application, a clock starts ticking and you need to make decisions about where, what and when you might file additional applications. In some cases you will want to establish a priority date and then delay additional expenses for as long as possible. In other cases you may want to launch a product immediately and have some sort of protection in place ASAP.

One thing that's especially important to consider is international patent protection. There is no such thing as a single "world patent" that protects you in all of the countries of the world. If you want protection in France and Korea you need to file for patents in France and Korea. There are ways to reduce the cost of those filings, but they are still expensive. In addition to filing fees you'll also have maintenance fees in the years ahead and those fees can be substantial.

If your plan is to license your invention you need to be careful. Potential licenses will want you to pay for any patent you've applied for so it's often a good idea to minimize the patents you apply for and put the obligation of additional patents on the licensee. To avoid misunderstandings, responsibilities for patent filings, maintenance and enforcement should be clearly detailed and discussed in any licensing agreement.

Here are links to some helpful articles I've been read that relate to patent strategy:

Doctrine of Equivalents Dead?

PCT Strategy

How to Stop Copiers During Patent Pending

Stopping Knockoffs

- Mike Marks

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