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U.S. patents are for excluding others from practicing inventi0ns in the U.S. The reach of U.S. patent rights, generally, does not extend beyond U.S. borders. A U.S. patent owner can stop and hold accountable infringers of the U.S. patent in U.S. federal courts and stop infringing imports with the help of the U.S International Trade Commission Office of Unfair Imports Investigations. A U.S. patent owner cannot, however, stop or hold anyone accountable for would-be infringement outside of U.S. borders with only the U.S. patent. So, what if you are manufacturing your product in China? What if you are selling your product in the United Kingdom? What if you notice copies coming into U.S. ports? You would be in better shape with counterpart patent filings in China, and the UK, for example.

Over the years, many clients have come to us to take over prosecution of a patent application or to stop patent infringement or copying only to share regret upon finding the window for foreign patent protection has long since passed. While clear in hindsight, the need for foreign patenting may not arise for some years after filing due dates have come and gone.

Understand the benefits of foreign patenting before you file for U.S. patent protection. In one recent case, our client leveraged foreign patents that issued while U.S. patents were still pending. We were successful in preserving market for our client in the U.S. and in the foreign market by enforcing the foreign patents. In several more recent cases for different clients, license deals, and portfolio sales benefited from, and in one case required, foreign patent counterparts. We have also had, for example, clients execute cost-effective multi-jurisdictional litigation strategies against a global opponent by leveraging a Chinese patent and the lower cost of patent litigation in China compared to a concurrent U.S. patent litigation.

On the other hand, we have also helped clients regain control over spiraling global patent portfolio costs. Many established companies have come to us disenchanted with or overburdened by an unnecessarily unwieldy global portfolio. Foreign patent protection incurs fees and costs for agents and foreign governments, and maintaining the foreign patent protection often requires some form of periodic maintenance fee. In some cases, foreign patent protection is not practical or even appropriate. With careful planning, trusted foreign agents, and a thoughtful foreign filing strategy, the benefits can far outweigh the cost of procurement for many portfolio owners.

Here are some reasons to think about foreign patent protection as you consider U.S. patent filing, whether you are building a new patent portfolio for a fledgling start-up or commanding a developed patent program for an established company:

I. Foreign Counterpart Patents for Start-up Companies of Any Stage

A. Global Market Expansion: For start-ups eyeing international markets, foreign counterpart patents are essential to protect their inventions in multiple countries.

B. Preventing Competition Abroad: They prevent competitors in foreign markets from using or replicating the patented technology, ensuring exclusivity in key markets.

C. Attracting Global Investments: Holding patents in major international markets can make start-ups more attractive to global investors, demonstrating a commitment to protecting innovations on a broader scale.

Strategic Importance:

D. Market Penetration: Securing patents in target international markets allows start-ups to enter and operate with legal protection, enabling smoother market penetration.

E. Competitive Advantage: Having patents in various countries shields start-ups from international competitors and strengthens their market position on a global scale.

II. Foreign Counterpart Patents for Established Mid-Market Companies and Larger

A. Global Market Leadership: Middle-market companies seek to solidify their global presence; foreign counterpart patents protect core technologies and processes across multiple jurisdictions, reinforcing market leadership.

B. Preventing International Imitation: They prevent competitors from capitalizing on the company's innovations in foreign markets, maintaining a strong competitive stance.

C. IP Portfolio Diversification: Holding patents in multiple countries diversifies the company's intellectual property portfolio, enhancing its overall value and market resilience.

Strategic Importance:

D. Expansion and Market Control: As mid-market companies expand internationally, having foreign counterpart patents supports their expansion strategies by ensuring legal protection and control over their innovations.

E. Risk Mitigation: Patents in various countries act as a defensive strategy against global patent challenges or infringement claims, safeguarding the company's position in the global market.

III. Conclusion

Foreign counterpart patents can be helpful, and in some cases, critical for start-ups and established mid-market companies and larger. Start-ups benefit by establishing a global presence, preventing competition abroad, and attracting international investments. Established companies leverage foreign patents to reinforce global market leadership, prevent international imitation, and diversify their intellectual property portfolio. Overall, foreign counterpart patents play a pivotal role in protecting innovations, supporting international expansion, and ensuring competitive advantage on a global scale.

We have two decades of experience in foreign patent law, visiting foreign patent offices, and working with foreign law firms and companies the world over to secure strong patent protection for clients. We know how to minimize costs and our long-term partnerships with trusted foreign agents enable us to provide nimble global capability for reasonable costs. Contact us for assistance planning foreign patent protection that aligns with your business goals.

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