Filing strategy

Filing strategy is the set of choices by which a business or an inventor decides which innovations to protect by patent, when, in which countries, by which routes and with what scope of claims. It combines patent law, which imposes its own requirements and time limits, with the applicant’s economic objectives and budget. Its essential parameters are set by the Paris Convention, which provides for the right of priority, the Patent Cooperation Treaty, the European Patent Convention and the French Intellectual Property Code.

Choosing between patent and secrecy

Not every innovation calls for a patent. The application is published eighteen months after the first filing, in exchange for an exclusive right limited to twenty years. Trade secret protection is better suited to processes that are difficult to analyse from the product, whereas a patent is essential for inventions that are easy to reproduce once the product is on the market. The choice must also take into account the ability to prove infringement, since a patent whose infringement cannot be established offers little protection.

Timing and geography

Novelty is assessed on the filing date, and any prior disclosure by the applicant itself may destroy patentability, as European law has no general grace period. The first filing opens a twelve-month priority period for extending protection abroad, and an international application makes it possible to defer the choice of countries and the corresponding costs until thirty months, or thirty-one months before the European Patent Office (EPO). Inventions made in France are also subject to national defence screening, which in principle means making the first filing with the INPI or requesting authorisation. The applicant then chooses between national patents, a classic European patent and a unitary patent, whose effect must be requested within one month of publication of the mention of grant.

Drafting and portfolio maintenance

The scope of the claims determines the value of the title, since claims that are too broad are exposed to invalidity and claims that are too narrow are easily designed around. Divisional applications make it possible to keep claims pending and adapt them to competitors’ products. The portfolio must be reviewed periodically, since abandoning titles of no economic interest reduces renewal fee costs. During the transitional period of the Unified Patent Court (UPC), the decision whether to opt out classic European patents is an integral part of the strategy.

Key points

Filing strategy determines the future value of a portfolio far more than the number of titles obtained. The most consequential decisions are taken before any disclosure and within twelve months of the first filing. The absence of prior disclosure should be checked, the priority and national phase entry deadlines entered in the docket, the countries targeted aligned with markets and manufacturing sites and the value of each title reassessed regularly.

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This glossary entry is general in scope and does not constitute legal advice.

Dhenne Avocats litigates patent disputes before the Paris Judicial Court, the Paris Court of Appeal and the Unified Patent Court. Where the question arises in a real case, the useful moment is almost always before proceedings are issued.

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