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News & Insights 

Annual Patent Planning Considerations

It's that time of year again...

Annual patent planning for your company/client(s) for next year.


Here are some key dates to track as you set your annual patent budget and help your team schedule their priorities:


  • Regular application 12-month filing due dates for your priority applications (e.g. provisionals) filed this year.

    • ⇨ Not only PCTs and regular U.S. app filing due dates, but consider non-PCT countries too.

    • ⇨ For China, consider whether to directly file a utility and utility model application.


  • Next year dates of your first-in-family patent publications (e.g., PCT publication dates).

    • Usually ~18 months from earliest priority filing in family.

    • ⇨ Important due dates for filings new apps with related, but new concepts.


  • 1 year post-publication dates for your publications from this year.

    • ⇨ 1st patent family publications, technical publications,1st offers for sale/sales, etc.

    • ⇨ Important due dates for filing new U.S. apps with more data, or related, but new concepts.


  • Next years national phase entry(s) (PCT) (30 or 31 month dates).

    • ⇨ Important to consider countries and associated translation costs and lead-time.


  • Next year's planned technical presentations (e.g. at biomed meetings), new product launches*, and publications**.

    • ⇨ Important dates to track, to have lead time to draft and file new patent apps.






 


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Post History:

12/10/23 posted (EJV)


The content on this website (including all pages, articles, and comments) is not legal advice, and does not and is not intended to form or constitute any attorney-client relationship. The content is not a solicitation for business; it is for educational and entertainment purposes only, and reflects the personal views of the author(s) only and not those of any past, present, or future client of DHL. Any content should be double-checked for accuracy and current applicability, and liability is disclaimed for any error or omission.


Footnotes:


* New product launches can give a heads-up to the patent team of a possible 1st offer for sale for a new product.


** Consider "publications" broadly within your R&D and regulatory teams (e.g., in biopharma even an update to a clinicaltrials.gov entry can be a publication see e.g., Celltrion, Inc. v. Chugai Seiyaku Kabushiki Kaisha, No. IPR2022-00578, Paper 78 (P.T.A.B. August 29, 2023)).

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