IP Essentials: Q&A Series


Q I know I need to file in multiple jurisdictions — where do I file first? A The answers to these questions will determine where you can file first and whether you need permission to do so: • Where the inventive activity was performed; • The citizenship of your inventors at the time of invention; • The residency of your inventors at the time of invention; and • The nationality of the applicant. The first filing rules differ for each country. Some countries require first filing in their country and/or permission to file elsewhere based on residency of the inventors, the citizenship of the inventors, or where the inventive activity was performed. For example, China requires foreign filing permission before an invention made in China is filed outside of China, regardless of the nationality or citizenship of the inventors. India requires foreign filing permission before an invention made by an Indian resident is filed outside of India, regardless of where the inventive activity occurred. If your invention was a collaboration by inventors that are citizens or residents of different countries, it may be necessary to request permission from multiple countries and/or file in a specific country first to make sure all requirements are met.

How do I know in which jurisdiction(s) to file?

The decision of where to file is a business decision, taking into con- sideration: • Budget • Business location—not only your headquarters, but anywhere you are operating • Current customers and potential markets • Competitors, real and potential, including anywhere they have manufacturing operations or sales It is important for an owner of the invention to perform a cost/benefit analysis of the cost of patent pro- tection versus the benefits of filing in a particular jurisdiction. Anoth- er consideration is the potential for enforcement of intellectual property rights in any particular jurisdiction.




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