Foreign Patent Prosecution

Every country has its own Patent laws and rules. We have successfully prosecuted patent applications in China, Japan, European Union, India, South Korea, Australia, and other countries. We partner with expert foreign patent attorneys to navigate the complex foreign patent laws and rules. We ensure that patent prosecution of your foreign matters is consistent with your US prosecution.

Portfolio Management Perspective

Drawing on experience managing global portfolios for major semiconductor and tech companies, we approach foreign prosecution with an eye on the budget and the business goal. We understand that foreign filing costs can balloon quickly. We help you manage this by:

• Consolidating instructions to reduce administrative overhead with foreign associates.
• Strategically deferring costs where possible using PCT timelines and PPH (Patent Prosecution Highway).
• Harmonizing claims to ensure your core invention is protected in all key manufacturing and sales hubs without paying for unnecessary coverage in non-critical markets.

When Foreign Filing Makes Sense

Foreign patent prosecution is usually about aligning IP coverage with your business plan. That can mean protecting key markets, supporting manufacturing or supply chain locations, preserving optionality for licensing, or building leverage in partnership negotiations. We help you decide where to file and why, with a focus on practical, budget-aware coverage.

Common Pathways

We routinely support multiple filing pathways and help pick the one that fits your timing and goals:

• Paris convention filings: Coordinated national or regional filings based on a priority application.
• PCT (international) strategy: A staged approach that can keep options open while you evaluate markets and investors.
• Direct national filings: In select cases where speed or country-specific strategy is the priority.

What We Do For You

Foreign prosecution is a coordination problem as much as it is a legal one. We help by:

• Setting a consistent claim strategy across jurisdictions, including fallback positions and scope priorities
• Coordinating with trusted local counsel for filing, prosecution, and formalities in each country or region
• Managing translations and formal requirements and keeping the process predictable
• Preparing and reviewing responses to foreign Office Actions, including claim amendments and argument strategy
• Keeping the foreign record aligned with your US prosecution goals, without creating unnecessary inconsistencies

How The Process Works

1. We start with your goals, products, and target markets, then map them to a filing strategy
2. We confirm the priority chain and timing, then plan filings around critical deadlines
3. For each jurisdiction, we coordinate filing instructions, forms, and any translation requirements
4. As Office Actions arrive, we review the issues, propose options, and coordinate a response with local counsel
5. We track progress, deadlines, and cost drivers across countries so there are no surprises

Common Questions

How do translation and formalities affect scope?

Translations and local practice can change how arguments land. We manage this by drafting clear source text, reviewing key translated sections when needed, and aligning claim amendments with local norms while protecting your core scope.

Can foreign prosecution be kept consistent with US strategy?

Yes. The goal is not identical claims everywhere, but a coherent set of claims that match business value, local enforceability, and reasonable prosecution history.