Test the available patent space
We conducted a patent search and advised the inventor on improvements to the coating technology in light of the results.
Case study · International · Patents
Protecting a new technology abroad.
We converted a Russian utility-model position into an international patent strategy covering the client’s target markets in Europe and Asia.
ClientProtective nano-coatings manufacturer (Russia)
MatterInternational patent protection
RouteRussia · PCT · EPO · Asia
Final resultProtection in target markets
The obstacle
A Russian utility model did not provide the international position the market required.
The client held a Russian utility model for equipment used to apply protective coatings to metal products. European customers were interested, and the client also planned to present the technology in Asian markets.
Utility-model protection was available in only a limited group of countries, so the existing right could not simply be extended across the client’s commercial geography.
The international route had to begin with a stronger, search-tested invention position.
Our strategy
Search first. Build the international route.
We used the search results to improve the technology, then coordinated Russian, PCT, EPO and national-phase prosecution.
Build the Russian invention filing
We drafted and filed a Russian invention application for the modified technical solution.
Create the international route
We filed a PCT application based on the Russian filing and selected the EPO as the international searching authority.
Move into the target markets
Following a positive EPO opinion, we entered Asian national phases and the EPO regional phase, using PPH acceleration where available.
Result
One coordinated route protected the technology across target markets.
The strategy reduced prosecution time and cost while securing the client’s position for presenting and commercialising the technology abroad.
Positive EPO opinionThe international search supported the developed invention position.
Regional and national phasesThe application moved into Europe and selected Asian jurisdictions.
Accelerated prosecutionPPH routes were used where available to shorten examination.
Key point
International filing strategy starts with a protectable invention.
What made the route work.
A domestic right is not automatically an export strategy. Search, claim development and market selection must be aligned before international phase costs begin to accumulate.
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This case study describes a completed matter and is provided for general information. Results depend on the facts, evidence and procedural history of each case.