A company approached us with the above task. It received a utility model in Russia for protective coating equipment and planned to supply this equipment abroad.
A direct solution to the problem was to file national applications in those countries where utility model protection is possible. The main disadvantage of this option is that the utility model for the equipment does not protect the technology of applying a protective coating.
In this course of action, the client would also need to select the countries of interest in a short time (12 months from the filing date of the first application) and immediately bear all the costs of filing many individual applications, which is risky for business. If the product is not in demand in the country chosen for patenting, then the investment will not be justified.
We proposed a different strategy, with fewer business risks and a phased plan for spending money on patents abroad. The client got the opportunity to test the demand for the product and find potential buyers.
Our strategy included:
To do this, we conducted a patent search and offered the client to refine the equipment and more fully characterize the stages of the technology implementation. As a result, we were able to prepare an application for an invention.
Next, we followed the procedure for obtaining foreign protection, namely, we:
Our strategy allowed the client to:
A direct solution to the problem was to file national applications in those countries where utility model protection is possible. The main disadvantage of this option is that the utility model for the equipment does not protect the technology of applying a protective coating.
In this course of action, the client would also need to select the countries of interest in a short time (12 months from the filing date of the first application) and immediately bear all the costs of filing many individual applications, which is risky for business. If the product is not in demand in the country chosen for patenting, then the investment will not be justified.
We proposed a different strategy, with fewer business risks and a phased plan for spending money on patents abroad. The client got the opportunity to test the demand for the product and find potential buyers.
Our strategy included:
- Increasing the timeframe for deciding on countries for patenting;
- Supplying the client with a greater choice of countries;
- Providing the opportunity to expand the scope of protection of the developed technology.
To do this, we conducted a patent search and offered the client to refine the equipment and more fully characterize the stages of the technology implementation. As a result, we were able to prepare an application for an invention.
Next, we followed the procedure for obtaining foreign protection, namely, we:
- filed an application for an invention with Rospatent and secured protection of the modified technology in Russia;
- filed an international application under the Patent Cooperation Treaty (PCT) procedure;
- transferred the international application to the European Patent Office (EPO), the national offices of Israel, and several Asian countries;
- took advantage of the Patent Prosecution Highway (PPH) for accelerated processing of applications.
Our strategy allowed the client to:
- Provide a monopoly position for the presentation of its technology in targeted foreign markets;
- Obtain an opinion of the International Searching Authority for the proposed technical solution and reduce the time for consideration of applications in foreign patent offices;
- Systematically distribute the costs of patenting.
