Monetization-oriented international patent filing strategy

How do you decide in which country you file a patent application? As you know, in order to obtain patent protection in multiple countries, you are required to file a patent application and obtain a patent in each country.

Generally, you may choose filing countries on the basis of the existence of your business within the limits of your budgets. In addition, you may also consider potential market size, the situation of IP system of countries etc. For example, China, the U.S. and Germany are the most litigious countries and patentee friendly. The figure below, which is excerpted from the materials prepared by Michael C. Elmer for the Global IP Project, shows the number of patent litigation filings (2006-2012) and most active court in each country.

Recently, I had a chance to discuss whether we can create a system which automatically suggests countries to file a patent application, for the case where we primarily intended to use the patent for monetization, rather than for the use by ourselves. In this case, we should consider its cost-performance by necessity. Therefore, we need to know in which countries potential buyers or licensees have an interest in doing business, as well as the expected revenue from patent transactions.

A possible approach is to regard countries with many highly relevant patents as the countries of interest to players in the same market. There are already AI-based tools to identify prior arts (i.e. similar technologies) from an input text describing an invention. So, maybe we can use them to identify such highly relevant patents. Such tools can also help us identify applicants for the patents, that is players in the field of the similar technologies (i.e. potential buyers or licensees). Patent citation analysis may help us identify further players in that field. Furthermore, we may consider market information and the situation of IP system of each countries.

As for the expected revenue, it is not easy to track such information. However, according to “The 2018 brokered patent market“, the average price per asset for 2017 is $176,000 per asset, and 13.5% of packages listed in 2017 have sold. Therefore, the expected value of patent transactions is $23,760. How do you see this value, considering the costs for obtainment of a patent?

Anyway, we will be able to see an AI-based system to show which countries are most effective to file patent applications in the near future.


Related article: Patent research & analysis to identify salable or licensable patents