Every patent owner would love to obtain worldwide patent protection for its entire patent portfolio. In reality, however, it can be prohibitively expensive to obtain patent protection in more than a few countries per patent for all but the most profitable inventions. As a result, every patent owner must make strategic choices about when and where to patent each and every invention. Often, the most cost-effective strategy is to file an initial patent application for a new invention in a single country, and then gradually to expand the number of patent filings for that invention over time as the patentability — and profitability — of the invention becomes clearer.
Usually the initial patent application is filed in the home country of the inventors or the company for which they work. Although this is a reasonable choice, it is important that such an initial patent application not be tailored too closely to the legal requirements of the particular country in which it is filed. Doing so, and ignoring the laws of other countries, could come back to haunt you when you later attempt to file that patent application in other countries, only to find that it is too late to modify the patent application to satisfy the laws in those countries.
Fortunately, steps can be taken to craft the initial patent application in ways that increase the likelihood that it will satisfy the legal requirements in many different countries. When such steps are performed carefully, they typically do not require much additional time, and yet they result in a single patent application that often can be refiled with few if any modifications in many countries. For example, some countries require the language in the patent’s claims to appear verbatim (word-for-word) in the patent’s specification. This requirement can be satisfied by copying the claims into the specification before filing the application. As another example, some countries apply more strictly than others the requirement that every element of every claim be shown in the drawings. This requirement can be satisfied by reviewing the claims before filing and comparing them to the drawings; if any elements are missing, they can be added to the drawings. The “best mode” requirement in the U.S. requires that the patent application describe the best mode (way) of practicing the invention, if there are multiple ways to practice the invention and the inventors believe one of them to be the best. Patent applicants in countries outside the U.S. can avoid running afoul of this requirement by complying with it even when filing patent applications in countries that do not have a “best mode” requirement. Then, if a decision is made to file such patent applications later in the U.S., those patent applications will already comply with the stricter U.S. standard.
It is not practical to file patent applications in every country in the world, or to write a single patent application that is guaranteed to satisfy the patent law of every country. With some knowledge of the most common similarities and differences among national patent laws, however, it is possible to plan and execute a patent strategy that can significantly increase the potential global reach of your patent applications for only a marginal increase in time and cost.