Foreign Patent Prosecution Best Practices.

Welcome to the Foreign Patent Prosecution Practices Results. This report reflects a diverse group of twenty-two patent-driven global companies.

Foreign patent applications may be filed in a variety of ways, including national patent applications filed in each country, a regional European patent application covering certain designated European countries, filing under the Patent Cooperation Treaty (PCT) or European Patent Office (EPO), and various combinations thereof.

In addition to identifying advantageous jurisdictions to protect your inventions, there are a myriad of options for foreign filing. Intellectual Property (IP) leaders must take several factors into account when deciding their approach to handling their foreign prosecution. This survey was designed to explore the key considerations and identify the prevailing and best practices.

The results of this 2017 foreign patent prosecution practices survey indicated that the majority of applicants seek protection in five to seven jurisdictions. PCT and EPO filing options are commonly used, mostly to delay a company’s foreign filing decision.

As part of an ongoing focus on patent operations, ipPerformance conducted an online survey in January 2017, preceded by a qualitative phone discussion with individuals within large organizations that are responsible for foreign patent prosecution approaches. The survey, data collection, and analysis were conducted by ipPerformance Group.

  • Prevalence of and reasons for accelerated examinations.
  • Usage of domestic counsel for oversight of foreign patent prosecution.
  • Usage of PCT or EP and reasons.
  • Frequency of PCT filings that enter the national phase.
  • Selection of search and examination authority.
  • Greatest challenges of foreign prosecution.