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© 2014 Foley Hoag LLP. All Rights Reserved. International Patent Protection for Emerging Companies WIPO Program on International IP Protection Suffolk University Law School November 11, 2014 Rajesh Vallabh 617-832-1268 rvallabh@foleyhoag.com
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International Patent Protection for Emerging Companies | 2 © 2014 Foley Hoag LLP. All Rights Reserved. Why Emerging Companies File Patent Applications Can be a major asset of a technology based venture Attracts investment Creates barrier to entry for competitors Can be a source of revenue through licensing
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International Patent Protection for Emerging Companies | 3 © 2014 Foley Hoag LLP. All Rights Reserved. Don’t Why Emerging Companies Don’t File Foreign Patent Applications Substantial Costs –Translation costs, annuities, foreign lawyer fees Other priorities: finalizing product design, marketing, obtaining US patents Uncertainty on commercial feasibility of invention Uncertainty on where markets will develop Uncertainty of enforceability in certain countries
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International Patent Protection for Emerging Companies | 4 © 2014 Foley Hoag LLP. All Rights Reserved. Advantages of PCT System Delays national or regional filing fees and translation costs Provides time to determine commercial demand for invention Provides time to assess the results of any corresponding US application Provides patentability search and publication
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International Patent Protection for Emerging Companies | 5 © 2014 Foley Hoag LLP. All Rights Reserved. International Filing Considerations Markets where products are made or sold Locations of competitors and potential business partners Likely scope of claims Enforceability of patent rights Ability to detect infringement
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International Patent Protection for Emerging Companies | 6 © 2014 Foley Hoag LLP. All Rights Reserved.
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