To organize a company’s global patent strategy, it should take the following steps:
- 1. Create an internal workflow system for decision-making;
- 2. Create a tier system for regions of commercial interest; and
- 3. Create a system of communicating decisions to the company’s domestic patent agent and PCT counsel for coordinated patent prosecution strategy.
The company’s management team should identify regions of commercial interest for its technology. This assessment may prove consistent among the company’s entire portfolio, or alternatively, may vary according to patent families or technology applications. This will enable your patent professional to help the company make decisions as its moves forward with patent protection.
Below is an exemplary document illustrating a system or procedure to accomplish these tasks. Any internal system that is effective for your team will suffice. The goal is to create an implement a global strategy. Any number of steps and/or tiers that address the company’s internal needs may be used.
With the tier system approach, the company can identify countries and assign various ratings of commercial importance to each. For example:
|Tier Level||Tier 1||Tier 2||Tier 3|
|Countries to be Filed
(PCT Member States shown in Bold Italics)
|AU, BR, CA, CN, CO,CZ, EG, EP, EP, FI, IN, JP, KR, MR, MX, NZ, PH, PL, RU, SG, SK, US, VN, ZA
AR, CL, PE, SA, TH, TW
|AU, BR, CA, CN, EP, FI, ID, IN, JP, KR, MX, RU, SG, US, VN
|CA, CN, EP, JP, MX, US|
|Tier 1 – high
Tier 2 – moderate
Tier 3 – low
Tier 4 – none, no further filings; abandon first filing.
The approach is useful in budgeting and long term planning. It also provides for a cohesive, rather than ad-hoc, global technology protection strategy.