Strategic choices:
​​​​​​​where and when to file a patent application?

Countries are commercially relevant if you, your potential licensees, and/or your competitors are or will be active there. This includes places where products or services are offered, produced, imported, or transited. Please note that enforcement of a patent in import and transit countries is sometimes not possible. It is also important to consider the preferences of potential investors or acquisition parties. Finally, you can also decide whether you want to use your patent offensively or defensively, and base your choice of countries on that. ontwikkelen.

Especially if your patent budget is limited, you can also make a strategic choice by covering the most important countries. This can make it much less attractive for competitors to market a product or service from a commercial point of view.

An international PCT application also allows you to postpone the final country selection for approximately 2.5 years at most. This allows you to first observe how the invention and the market develop.

Furthermore, cost considerations may play a role in the country selection. Translation costs can—in addition to filing and examination costs—account for a significant portion of the total budget. This is especially true in countries where a full translation of the application is required, such as South Korea, Japan and China. Before you make a final choice of countries, V.O. can help you to map out the costs involved.

Submitting a patent application too early carries the risk that the invention has not yet been sufficiently developed. This can lead to overly limited protection, for example because subsequent improvements are not covered by the scope of the patent. In many cases, this is desirable. In addition, it often takes some time before inventions actually come onto the market. Submitting an application too early can therefore mean that part of the term of the patent is lost because the product is not yet commercially relevant.

On the other hand, filing too late may mean that the invention is no longer new, for example due to publications, presentations, or commercial exploitation. In many cases, this means that you can no longer obtain a valid patent.

You can also file a priority application and decide at the end of the priority year whether to file a follow-up application or not to do so and withdraw the priority application. In that case, the application will not be published and the invention will remain secret. If no relevant publications have been made in the meantime, you can file the priority application again. A new priority year will then commence. This gives you a great deal of flexibility, although there is a risk that patent applications will only be published after 18 months. It is therefore impossible to check whether a competitor already has a harmful application pending that has not yet been published, and you still want to benefit from your own earlier priority application.

Want to know more?

Follow the webinar ‘Getting started with patents’