Most likely not. In most countries, a previous public disclosure or sale (intentional or not) is a bar, or barrier, to patentability. However, some countries may allow for a grace period, or a set amount of time, from the first public disclosure within which a patent application may still be filed. Any grace period allowed by a jurisdiction will start immediately upon the first disclosure. Accordingly, it is important to identify such disclosures as soon as possible.

Not long. Through multiple international treaties, most of the intellectual property protection-related laws around the world are substantially harmonized and integrated. Accordingly, starting from the filing date of your original application, there is a hard-and-fast one-year deadline by which any and all foreign applications claiming priority to the original application must be filed. If foreign applications are not filed at that time, the applicant will likely have lost the ability to file additional applications to the same invention. As such, expanding companies should be mindful of such deadlines, and a full vetting of potential future expansion and the existing commercial landscape should be undertaken before a decision not to file is made.

For a company with unlimited resources looking to expand abroad, filing for patent protection worldwide, in as many jurisdictions as possible, may be an easy way to cover current and future activity; however, most companies have limited resources and must selectively limit their filings to certain countries/jurisdictions. The decision of where to file is typically a business-based decision, taking into consideration:

• Budget.
• Current and future business locations. Not only your headquarters, but also anywhere you are operating.
• Current customers and potential markets.
• Competitors, real and potential, including those anywhere they have manufacturing operations or sales.

It is important for an owner of the invention to perform an analysis of the cost of filing for patent protection versus the benefits of filing in a particular jurisdiction. Another important consideration is the viability of potential enforcement of intellectual property rights in any particular jurisdiction.

One way for a company to buy itself more time to make such important foreign filing decisions is to file a Patent Cooperation Treaty (PCT) application to gain provisional protection in the 158 contracting states of the Patent Cooperation Treaty. The benefit of a PCT application is that it affords the company time to make more informed decisions about where patent protection is desired before filing in individual jurisdictions/countries.

Yes. Most countries have their own patent and design registration systems with individual timelines, rules, and laws. The filing process for most countries can be broken down into the following stages:

• Filing/Formalities
• Search & Examination
• Publication
• Grant

The answers to these questions will determine where you can file first and whether you need permission to do so:

• Where the inventive activity was performed;
• The citizenship of your inventors at the time of invention;
• The residency of your inventors at the time of invention; and
• The nationality of the applicant.

The first filing rules differ for each country: some countries require first filing in their country and/or permission to file elsewhere, based on residency of the inventors, the citizenship of the inventors, or where the inventive activity was performed.

For example, the United States requires foreign filing permission before an invention made in the United States is filed outside of the United States, regardless of the nationality or citizenship of the inventors. India requires foreign filing permission before an invention made by an Indian resident is filed outside of India, regardless of where the inventive activity occurred.

If your invention was a collaboration by inventors that are citizens or residents of different countries, it may be necessary to request permission from multiple countries and/or file in a specific country first to make sure all requirements are met.

Most countries will grant a patent to the first person who files a patent application for a particular invention. Additionally, most countries will not allow you to patent an invention that has already been disclosed to the public. Therefore, ensuring the filing date of your application has priority, or predates, other applications and/or disclosures, is important when determining when and where you may be able to file.

Each jurisdiction charges government defined fees for filing an application. Applicants are typically also subject to local agent fees. If you file in a non-English language country, translations of the application will be required. Translation costs will depend on the length of the application and the languages involved.

There are a variety of fees an applicant can expect after filing, such as:

• periodic annuity fees which can vary depending on the country
• local agent and governmental fees for responding to patent office actions
• issue fee payments when the application is ready to grant.

A key component of a company’s IP strategy typically involves the early filing of at least one patent application; however, the early protection of other forms of IP may be beneficial for an expanding company to consider:

• Trademarks: The early registration of a trademark in desired countries/jurisdictions can prevent future disagreements, and potentially expensive litigation, about first use and territorial rights.
• Trade Secret: If a company plans to protect certain information/technology as a trade secret, measures must immediately be taken to maintain the secret. Such measures include putting the proper procedures/policies in place within and outside of your company early enough that unwanted disclosure of the material is prevented. Once the material is no longer secret, trade secret protection is not possible.

By taking a well-rounded approach to developing an IP strategy, and considering the items identified above, amongst others, with the help of a seasoned practitioner, a globally expanding company can develop a thoughtful strategy that protects its valuable IP rights while avoiding potentially harmful legal situations.