Competing globally requires determining which of your Intellectual Property assets need to be protected and where.

Foreign Filings

Sand & Sebolt can help you develop/review your foreign patent and trademark filing strategy. The primary goal is to determine or review which international  jurisdictions you should target for patent protection.  From a filing strategy perspective, there are many things to consider such as your key markets of interest; your competitors’ key markets of interest, your suppliers and customers; and the maturity and sophistication of the patent jurisdictions being considered. Also keep in mind the locations of your key manufacturing locations, core technologies, alternative filing routes and how best to balance time and cost issues. A good foreign filing strategy starts with a hard look in the mirror. How are/will your patents be used? Is the intent to stop others from copying, gaining competitive advantage, tipping the balance, obtaining revenue from licensing/selling and/or leveraging the patents for funding purposes, other?  We would also explore other pertinent issues together like:

    • Where can infringement orders be obtained at reasonable costs/time
    • Where are we seeing infringements and can we get protection in these countries?
    • Can we reasonably enforce our patents in the target countries?
    • How relevant is our IP in our countries of interest?
    • How much do we have/need to spend?
    • Are we prepared to fight for a patent in difficult jurisdictions, or should we just get it registered?
    • Are there IP professionals in-house or will we need to tap into our agent networks in the jurisdictions of interest?
    • When do we the need these patents and can we “synchronize” the process across different countries?
    • What kind of filing routes are available? What kind of claims need to be written, and how should the application be drafted
    • And more…

We find a surprising number of companies don’t have an effective foreign filing strategy.  Often this is due to not understanding the details and inner-workings of the international IP community.  This is where we can help.  After 30 years of working with some of the best IP law firms around the globe, Sand & Sebolt can help you make good foreign filing choices that meet both your legal needs and your overall strategic business goals.

What Our Clients Say About Us

“For me issues involving patents have been exhausting. They steal my attention from other day to day business and overburden me. Using Sand and Sebolt for our patent work has changed that for Barbco. Their integrity, quality of work and personal touch truly brings us piece of mind.”

David Barbera
Barbco, Inc.
One of the world’s premier manufacturers of auger boring machines

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