Tips on planning an overseas IP filing programme

Plan as far ahead as possible 
What needs to be planned?
A successful overseas filing programme?

Seeking overseas IP protection is a significant yet commonplace step in the commercialisation of intellectual property. However, it has the potential to take significant time and expense if not planned well. The following review suggests recommendations for handling the overseas filing process that can generate dramatic time and cost savings. For the purposes of the article, it is assumed that a domestic or international IP filing has already occurred.

Plan as far ahead as possible 
Planning the overseas filing programme as far ahead of the deadline as possible is strongly recommended. While instructing an attorney to file just before the deadline will often result in a perfectly valid filing, there are some issues to consider.

First, many countries require the filing of documents such as translations, assignments of rights and powers of attorney. Such documents can usually be filed after the deadline but typically at a cost, in terms of both attorney fees and, often, significant official fees for late filing. In the case of translation, waiting until the last month before the filing deadline could double translation fees, making this a significant expense. Further, a ‘just in time’ filing may put increased pressure on theapplicant to complete documentation quickly, often having to confer with parties such as notaries public who have their own schedules. This may have further repercussions on management and other commercialisation opportunities; leaving plenty of time will increase the resulting benefits.

Second, competitor activity or further internal investigations may lead to a rethink of the scope of the intellectual property. This is especially true where patents are concerned. Patent claim scope revision may be very important; thus, it is worthwhile leaving sufficient time for claim amendments to be fully considered and then filed. It is difficult to perform this step effectively if it is left to the filing phase as timing constraints press too hard.

On balance, instructions for filing should be completed about two months ahead of the deadline.

What needs to be planned?

Market selection
Obtaining IP protection across a wide range of countries will incur significant expense. That expense needs to be justified against the potential commercial benefits and, in the short term, an IP budget. Country selection may follow a detailed market analysis, but this may not always be available. A range of issues should be considered:

• How does it fit with the overall business plan – what are the manufacturing, marketing and distribution strategies for the product/process?
• Where are negotiations about the transaction or transactions concerning the intellectual property planned or actually proceeding?
• What markets for related intellectual property have been selected previously?
• Were there any reluctant deletions of countries when filing previously? This might be the time to cover those countries with the follow-up intellectual property.
• What are the key competitor markets?
• Where might the product be manufactured?
• Especially for software and business method patents, where might the process or steps in the process be conducted?

Scope of intellectual property
As mentioned earlier, the target scope of intellectual property may change in response to competitor activity and further validity investigations. Amending the intellectual property or differentiating branding strategy, for some markets, may thus be desired. Three to six months ahead of the filing deadline is a good timeframe for considering these kinds of strategy changes.

Associate selection
A company may already have an idea of the representation it wishes to have overseas. Alternatively, it may wish to consider its options for representation and seek competitive quotes for services. Two to three months ahead of the filing deadline will, in most cases, allow time for this process.

Filing documentation 
Overseas filing may require translation(s) and other documents such as assignments and powers of attorney to be filed. It may be important to record an assignment of the intellectual property to a different entity. As the costs of leaving such steps to the filing deadline – or afterwards, if permitted – may be very significant (even double), it is recommended that country selection and preparation of the necessary documents be completed at least one to two months ahead of the filing deadline.

Expenditure timing
It is usually possible for an attorney to provide indicative costs and timing of these costs well ahead of the filing deadline once draft market selection is completed. This will help the budgetary process and will usually focus the discussion about priority markets.

A successful overseas filing programme?
While the most important test is whether the commercial benefit outweighs the costs of the programme, indications of a successful overseas filing programme may include:

• filing costs within budget;
• minimal post-filing documentary requirements;
• possible lower examination costs due to all formalities having been correctly completed; and 
• less correspondence and fewer internal file management issues.

These benefits are readily attainable through a well-planned overseas filing programme.


This is an insight article whose content has not been commissioned or written by the IAM editorial team, but which has been proofed and edited to run in accordance with the IAM style guide.

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