By By Andrew T. Pham2 and Matthew B. Weinstein3 and Gianni Minutoli4
Andrew T. Pham
Matthew B. Weinstein
In today's hypercompetitive global economy, companies must pursue global patent protection to compete effectively in the worldwide market or risk losing the ability to protect their intellectual capital. To do so, companies should develop an effective and efficient global patent filing strategy to ensure a maximum return on their patent investments—especially in trying economic times. Generally speaking, a global patent filing strategy should consider: (1) where a technology is being developed, manufactured and marketed; (2) where competitors are based; and (3) how far the company's patent budget can reach.
This strategy should also define goals for success, including varying levels of the following: the amount of protection needed for products and other IP, one's comfort level with litigation risks, corporate recognition, necessity of controlling a product market, and building revenue through licensing. Prioritizing these goals will guide how and where a company files for protection and what resources will be spent in different areas of the strategy.
Generally, two basic rules should control a global patent filing strategy:
The First Rule: Seek patent protection primarily where the company, its licensees and its major competitors conduct business, and on technologies central to the busin...