Foreign Filing Tips for Small Companies and Sole Inventors

Posted by Jeff Shieh

Wednesday, Aug 24, 2011 @ 08:18 PM

There’s been plenty of buzz in the news recently regarding the patent battles raging between tech and communication giants, as these parties spend millions filing applications or procuring outside portfolios.  On a much smaller scale, but no less important to the parties involved, are the efforts of small companies and sole inventors to protect their intellectual property.  But with limited manpower and budgets, how can a small entity applicant maximize his patent protection?

Since inovia‘s inception nine years ago, we have helped many individual inventors and small companies streamline and reduce the costs of PCT national stage entry and European validation.  I’ve compiled a list of tips and strategies for these applicants to keep in mind when pursuing patent protection:

Get familiar with the patent process
Applicants can save a lot of time (and money) with even just some passable knowledge of the patent process.  For example, knowing when deadlines are approaching helps you to plan ahead and avoid any unnecessary time extensions and late fees.

Minimize the role of your law firm
Of course, most applicants need outside counsel to handle the substantive prosecution of their applications.  But many of our smaller clients have arrangements in place where they get “first crack” at any incoming matters.  Even producing a rough outline for a response to an Office Action, for example, reduces the work for their attorney, which cuts the cost for the applicant.

File under small entity status where you can
Many jurisdictions offer fee reductions for applicants eligible for small entity or individual status.  Ask your attorney where these discounts are available; just be sure that you definitely qualify for small entity status.  Incorrectly claiming small entity status can result in dire consequences.

Utilize inovia‘s resources
Our website contains a number of links and documents to assist applicants.  We have overviews of the PCT national stage entry and European validation processes, as well as a foreign filing blog covering issues affecting the IP industry.  Additionally, many small applicants need to be able to predict their patent costs.  Our 1-click quote tool allows them to generate accurate quotes for national stage filings and European validation.  Many clients have found that these quotes are especially useful when speaking with investors and licensees.

I hope these tips come in handy.  Please feel free to leave a comment below or give us a call if you have any questions.  Good luck patenting!

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