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As discussed in the first part of this series, COVID-19 is having a profound impact on the global economy.

During this difficult and highly unpredictable time many businesses and individuals are reviewing their IP portfolio due to diminishing cash reserves and restricted access to capital. This is the second instalment in a series of articles outlining practical tips to help reduce IP portfolio expenses without compromising the protection of your IP.  


Tip 5: Carefully elect the countries to obtain patent protection

If you have filed either a provisional or complete application; you are nearing the 12-month deadline to file applications overseas and need to decide which countries you wish to seek patent protection , we recommend filing patent applications only in key commercial markets suitable for your invention with established patent laws for you to  properly enforce your patent. This maximises your patent’s potential within a manageable budget and avoids unnecessary costs. The advantage of being selective with countries is a smaller initial investment. However, after deciding upon which countries to enter at the time of application, other jurisdictions cannot be added later. 

Tip 6: Picking the right pathway to file your regional patent applications 

To seek patent protection in overseas jurisdictions of interest, a complete application must be filed within 12 months from the provisional application filing date. Filing patent applications in overseas jurisdictions can be done in two different ways: the Patent Cooperation Treaty (PCT) or direct filing. We recommend filing through the PCT, because it can delay payment of national filing fees by up to 30 or 31 months (depending on the country).  The disadvantage to the PCT, is that this can only be taken to file in PCT member countries (a list of which can be found here). 

Tip 7: Staggering your national/regional phase entries 

If you are filing in multiple countries through the PCT, we recommend ‘staggering’ application entries into the respective national (or regional) patent offices. This means delaying national phase entry in each country for as long as possible. Different countries have different national phase entry deadlines (the deadline is calculated from the filing date of the earliest application).  

For example, Australia, New Zealand and Europe have a 31-month deadline. The USA is only 30 months and China is 32 months (subject to payment of an additional fee for late entry). The advantage of this approach is that national fees are spread months apart, helping with cashflow management. The disadvantage is that due dates must be closely monitored. Missing any of the extended deadlines could be irretrievable. For a list of countries with different national phase entry deadlines inclusive of countries which offer extensions of time, please refer to this document here

Tip 8: Withdrawal of priority claim(s) during the PCT stage 

This tip is applicable if the patent process is already in the PCT stage and priority is based on a provisional application (or complete patent application at first instance) and you wish to delay costs to manage cash flow without withdrawing/abandoning the application. 

In this scenario, we would advise withdrawing the provisional application priority claim(s) for which the PCT application is based. This changes the priority date to the PCT application filing date, pushing back the national phase entry deadline by 12 months. Although this strategy provides the advantage of a 12-month time delay in expending a large amount of money, you will lose the priority date associated with the priority application (provisional or complete application at first instance). Accordingly, any prior art filed or published before your ‘new priority date’ will be citable. 

Tip 9: Relaxed deadlines 

Patent offices around the world are cognisant of the fallout from COVID-19. To minimise the pandemic’s impact, many patent offices have provided deadline extensions in relation to missed deadlines in performing certain actions during the patenting process. At the time of writing, Australia’s Patent Office has not announced any new deadline extensions, but already provides time extensions for instances where deadlines to perform a required action are missed. Nevertheless, we suggest that you maximise the provided deadline extensions in relevant overseas jurisdictions. For a summary of deadline extensions provided by patent offices which may be relevant to you, please refer to our other article here

To discuss any of the above in greater detail, or seek further advice about what your business can do to free up capital without exposing your IP portfolio to unnecessary risk, please contact one of the authors or via enquiries@griffithhack.com 

Co-Author - Stuart Boyer, Patent Attorney 

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