Why We Treat Overseas Patent Filing Differently Depending on the Jurisdiction

When a patent application is filed outside the UK or Europe, the approach isn't necessarily the same in every country.

Different patent offices have different examination processes and the extent to which they rely on work already carried out elsewhere can vary considerably. That means the way an overseas application is handled should reflect the requirements of the particular jurisdiction.

Not every patent office does the same job

In many territories, a patent application can make use of search and examination work that has already been carried out by the European Patent Office (EPO) or another major patent office.

In these cases, the role of the local patent attorney may be relatively straightforward. The application may not require the same level of independent analysis or local judgement as it would in a jurisdiction where the patent office carries out its own substantive examination from scratch.

The distinction is particularly important in jurisdictions such as the United States and China, where local patent offices conduct their own examination. This affects how we approach overseas filings.

Why our approach differs in the US and China

For applications in the US and China, we work with a small number of associate firms with whom we have developed long-term professional relationships.

The value of these relationships goes beyond simply knowing who to contact.

Patent examination involves judgement. An examiner's objections, local examination practices and the conventions that develop within a particular patent office are not always captured fully in formal guidance or textbooks.

Working with attorneys who understand the local system ,and who understand how we work, can make it easier to navigate those issues effectively.

Over time, these relationships also allow us to develop a good understanding of how our respective teams work and communicate, which can be particularly valuable when dealing with more complex applications.

A different approach for other jurisdictions

For other countries, we don't automatically use the same associate firms.

Instead, we consider what the particular application requires and identify an appropriate local patent attorney through trusted sources.

This allows us to consider factors such as the complexity of the application, the examination process in that jurisdiction and the level of local expertise that is likely to be required.

It also means that the cost of overseas representation can be proportionate to the work actually needed.

A straightforward filing in a jurisdiction where substantial examination work has already been carried out elsewhere does not necessarily require the same level of local input as an application facing a fully independent examination.

Choosing the right associate for the right jurisdiction

There isn't one approach that works equally well everywhere.

For some jurisdictions, the value of a long-standing relationship with a trusted local attorney is particularly important. For others, it makes more sense to identify the most appropriate associate for the individual case.

The underlying principle is the same in both situations: the choice of overseas patent attorney should be driven by what the application and the client require, rather than simply by what is most convenient for us.

Different jurisdictions create different requirements. Our approach to overseas filing reflects that.