Dave Roccio of Lando and Anastasi, a Boston-based law firm specializing in intellectual property (IP), takes a holistic view on patent filing – it’s not just about filing the patent application, it’s about his client’s stage in business, what they want to achieve, and their long-term goals.
One telling example, he shares, is that of a tech company client that received funding and had 10 technologies to protect. They had funding, a strategy, and needed to move fast to protect their inventions. They budgeted about $10k per patent (the average cost of a single filing) and had one year to determine the countries in which to file, not an easy decision as each country would require another $100K for 10 filings.
This is where Dave’s holistic approach comes in; he will advise his clients on where, when, and what to file. The first three variables to consider are:
- The opportunities in the home country;
- Where your clients are; and,
- Where your competitors are.
As part of the process, Dave determines whether the client would benefit from complete applications, wholly protecting them from competitors on many different levels, or if it’s better to file quickly for minimal, viable commercial usage. Interestingly, his electrical engineering background also means that where he ultimately chooses to file may differ from other patent attorneys’ choices.
That said, he adds, US companies most commonly file for patents in:
- Europe – the European Patent Office oversees the countries in the region but is not affiliated with the official EU, so the UK is still part of this group. Companies file one application and then choose the countries they want to enter.
- China
- India
- Australia
- Canada
Rules around translation vary according to country, but every office usually requires translation into the local language. When deadlines are especially tight and attorneys need immediate understanding of particular content, the firm will sometimes utilize machine translation; however, a one-word mistake in a patent application can cause a lot of issues – delays, denials, extra time, and costs. Ultimately, it’s a balancing act between time and accuracy and, should that fail Dave will always turn to human translators to ensure accuracy.
Timeliness is of utmost importance for companies managing patents and other IP. Global marketers, too, should check for patent protections before selling into a new country. Going to market prior to the patent process starts the clock on the time allowance for patent applications; if a company tries to file a few years after entering the country, they likely won’t be able to protect their IP.
Links:
Website: https://lalaw.com/
LinkedIn: https://www.linkedin.com/in/davidroccio/
Connect with Wendy - https://www.linkedin.com/in/wendypease/
Music: Fiddle-De-Dee by Shane Ivers - https://www.silvermansound.com
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