Document type: Toolkit Practice area: Intellectual Property — Patents Jurisdiction: United States and international Last reviewed: 5 September 2026

How to use this toolkit

International patent practice is mostly operations. The substantive law is genuinely interesting — added matter, unity of invention, the reach of 35 U.S.C. § 271 beyond the border — but the cases that are lost are almost never lost on the law. They are lost on a date, a handoff, or a decision nobody made.

So this toolkit is mostly calendars, forms, and models. The annotations explain what each one is defending against.

Tool 1 — Master filing calendar

Every date below is computed from the earliest priority date. Enter that one date and the rest follow.

PRIORITY DATE: ____________  (P)

P + 0        Priority application filed
             [ ] Foreign filing license confirmed on receipt
P + 3 mo     Business plan confirmation
P + 3-9 mo   Supplemental priority filings as invention develops
P + 6 mo     ** Paris deadline for DESIGN applications ** (6 months, not 12)
P + 6 mo     Foreign filing period under 35 U.S.C. § 184 ends
P + 6 mo     Prior art search complete
P + 9 mo     Business case review — carry forward or drop
P + 10 mo    ** INTERNAL DEADLINE: Paris/PCT decision made and instructed **
P + 12 mo    ** PARIS CONVENTION DEADLINE — HARD, NO EXTENSION **
             PCT filed, or direct national filings complete
P + 16-18 mo International Search Report and Written Opinion received
             [ ] Read it. Decide: proceed / amend / abandon.
P + 18 mo    International publication; US publication under § 122
             [ ] Business and sales notified
P + 19 mo    Chapter II demand deadline (jurisdiction-dependent)
P + 28 mo    ** INTERNAL DEADLINE: national phase decisions approved **
P + 30 mo    ** NATIONAL PHASE DEADLINE ** (31 in some jurisdictions)
             [ ] Entries filed, translations lodged, agents appointed

POST-ENTRY, PER JURISDICTION
IFD + 3 yr   Japan: request for examination
FD + 3 yr    China: request for examination
             Other examination requests: ____________
Grant        Europe: validation deadlines per state
Grant        Europe: Unitary Patent election decision
Grant        Europe: UPC opt-out decision (classical EPs)
Grant + 9 mo ** EPO OPPOSITION WINDOW CLOSES **
             (track for YOUR patents and COMPETITORS' patents)
Annual       Annuities — every jurisdiction, every year, begins pre-grant
Ongoing      Continuation / divisional deadlines per jurisdiction

Annotation. Two things about this calendar. First, the internal deadlines at P+10 and P+28 are the operative dates for your organization; the statutory dates are where the right dies, not where the work happens. Second, the design deadline at six months is on the calendar because a company that files a design application and calendars twelve months has already lost the foreign priority claim, and this happens regularly to companies that do utility filings well.

Tool 2 — Invention disclosure form (one page)

INVENTION DISCLOSURE                      Submitted: __________

1. What problem does this solve?  (2-3 sentences)

2. What is the solution?  (Describe it. Sketches welcome. Attach anything.)

3. What did people do before, and why is this better?

4. Who contributed to conceiving it?
   Name / role / employer / location: ______________________________
   (Include contractors, consultants, and anyone outside the company.)

5. ** HAS THIS BEEN DISCLOSED OUTSIDE THE COMPANY? **
   [ ] No
   [ ] Yes — what, to whom, when: __________________________________
   [ ] Scheduled or submitted — abstract, paper, talk, demo, listing:
       __________________________________  Date: __________
   (An NDA in place?  Y / N)

6. Is it in a product or on the roadmap?  Which?  When ships?

7. If a competitor used this, could we tell from their product?
   [ ] Yes, from the product   [ ] Yes, from published materials
   [ ] No — it would be invisible to us

8. Any related agreement?  Joint development / government funding /
   standards body / open source:  ______________________________

Submitter: ______________   Business unit: ______________

Annotation. Question 5 exists because absolute-novelty jurisdictions treat the inventor's own prior disclosure as prior art, and the engineer is the only person who knows about the abstract submitted last month. Question 7 exists because it is the trade-secret question: if the answer is "invisible to us," a patent may be a publication with a fee attached, and the disclosure should be routed to a trade secret analysis rather than to a filing. Question 8 exists because encumbrances found at disclosure are manageable and encumbrances found in diligence are not.

Process rule that matters more than the form: every disclosure gets a decision within thirty days, with a reason. An engineer who submits and hears nothing never submits again.

Tool 3 — Jurisdiction strategy (one page)

[COMPANY] PATENT JURISDICTION STRATEGY        Approved: ________
                                              By: ____________

INPUTS
  Revenue by country (source: Finance, dated ________):
    ______________________________________________________
  Our manufacturing locations: __________________________
  Competitor manufacturing locations: ____________________
  Markets where we would realistically enforce: ___________
  Non-enforcement drivers (procurement, tenders, diligence,
    licensing, deterrence): ______________________________

TIERS
  TIER 1 — every family:            ____________________
  TIER 2 — significant families:    ____________________
  TIER 3 — by exception, with a written reason: __________

EXCEPTION PROCESS
  Deviation from tiers requires: written rationale + approval by
  ____________________ (name/role).

REVIEW
  This strategy is revisited annually, in ________ (month).

Annotation. The value of this document is that it converts every future filing conversation from a debate into an application of policy. Get it signed by whoever controls the budget. A CFO who has approved the strategy approves the invoices that follow from it; a CFO who sees only the invoices asks what the money is for, every time.

Tool 4 — National phase decision memo

FAMILY: ______________________     PRIORITY: ____________
NATIONAL PHASE DEADLINE: ____________

1. THE INVENTION (2 sentences, in plain language)

2. PRODUCT / PROGRAM COVERED, and current revenue

3. INTERNATIONAL SEARCH REPORT SUMMARY
   Categories cited: ______   Claims affected: ______
   Written Opinion:  positive / mixed / negative
   Response taken:   none / Art. 19 / Chapter II demand

4. RECOMMENDED JURISDICTIONS
   +-------------+----------+-------------+---------------+
   | Country     | Tier     | Entry cost  | 10-YR TCO     |
   +-------------+----------+-------------+---------------+
   | US          |          | $           | $             |
   | EPO         |          | $           | $             |
   | CN          |          | $           | $             |
   | JP          |          | $           | $             |
   | KR          |          | $           | $             |
   +-------------+----------+-------------+---------------+
   TOTAL ENTRY: $__________   TOTAL 10-YR TCO: $__________

5. NOT ENTERING, AND WHY
   ______________________________________________________

6. DEVIATIONS FROM JURISDICTION STRATEGY, AND WHY
   ______________________________________________________

7. RECOMMENDATION:  enter as above / reduce to ______ / abandon

Prepared by: __________   Approved: __________   Date: ________

Annotation. Section 4's second cost column is the entire point of this memo. Entry cost is a few thousand dollars per country and nobody objects. Ten-year total cost of ownership including prosecution and annuities is an order of magnitude larger, and it is the number the approver is actually committing to. Present the real number and the pruning decisions get made at the right time, by the right person, instead of arriving in year six as an abandonment nobody planned.

Section 5 is short and it prevents a recurring conversation three years later about why there is no patent in a country somebody now cares about.

Tool 5 — Foreign associate instruction letter

Dear [Associate],

Re: [Family] — [Country] — [Application no.] — Office Action of [date]

BACKGROUND YOU MAY NOT HAVE

  Product:  [What the client actually sells, in two sentences.]
  Market:   [Where, how much, growing or not.]
  Competitor position: [Who competes, what they sell, whether
            they are believed to practice these claims.]

WHAT MATTERS COMMERCIALLY

  The commercially essential feature is [X]. Claim scope that
  covers [X] without [Y] is worth substantially more to us than
  scope that requires [Y], because [reason].

  We would accept: ______________________________________
  We would not accept: __________________________________

PARALLEL PROCEEDINGS

  Corresponding cases: [country / status / claim scope allowed]
  Statements made elsewhere that we must remain consistent with:
  ______________________________________________________

YOUR INSTRUCTIONS

  Please advise on response strategy, including (a) whether the
  cited art can be distinguished on the merits, (b) what amendment
  would secure allowance and what it would cost us in scope, and
  (c) whether a divisional should be filed to preserve the broader
  claim. Please give us a fee estimate for each option.

  ADDED MATTER: any amendment must have literal basis in the
  application as filed. Please identify the basis for each
  amendment proposed.

Deadline: ____________  Our internal deadline: ____________

Annotation. The standard practice — forwarding an office action with "please advise," receiving a recommendation, and forwarding it onward with "associate recommends" — means nobody has made a strategic decision. An associate who knows that the manifold geometry is the commercially essential feature will fight for it; an associate who knows nothing will optimize for allowance, which is a different objective. The added-matter paragraph is there because Article 123(2)/(3) creates a trap that cannot be escaped later.

Tool 6 — Translation review protocol

BEFORE TRANSLATION
  [ ] Technically qualified translator engaged (subject-matter, not
      general legal)
  [ ] Glossary of claim terms supplied, with the intended meaning of
      each term of art
  [ ] Terms that must be translated broadly flagged (e.g. "at least
      one," "substantially," "coupled to," "comprising")

AFTER TRANSLATION, BEFORE FILING
  [ ] Foreign associate reviews translation against the original
  [ ] Claim-by-claim comparison of scope
  [ ] Specific check: has any open-ended term become closed?
  [ ] Specific check: has any genus become a species?
  [ ] Specific check: has any "at least one" become singular?
  [ ] Numerical ranges and units verified
  [ ] Reference numerals consistent with the drawings
  [ ] Discrepancies resolved and documented

RECORD
  Translator: __________  Reviewer: __________  Date: ________

Annotation. In most jurisdictions the translated text is the operative text, which makes translation a legal act performed by a vendor. The three specific checks are the three errors that actually occur, and each of them narrows a claim permanently. Fund the review. It is the cheapest scope insurance in the national phase budget.

Tool 7 — Annuity reconciliation worksheet

Run once a year, on a fixed date.

For each case in the register:

  Case ID | Country | Status | Next annuity due | Amount |
  RESPONSIBLE PARTY (named entity) | In annuity service? Y/N |
  In firm docket? Y/N | Discrepancy? | Resolved by | Date

RECONCILIATION SUMMARY
  Cases in register:              ______
  Cases in annuity service list:  ______
  Cases in firm docket:           ______
  In register but not in service:     ______  ** INVESTIGATE **
  In service but not in register:     ______  ** INVESTIGATE **
  Cases with no named responsible party: ______  ** FIX TODAY **
  Cases marked for abandonment but still being paid: ______

SIGN-OFF
  In-house: __________  Firm: __________  Service: __________

Annotation. This is one day of work per year and it is the highest-value day in the calendar. The two failure modes it catches are the handoff gap (the firm assumes the service has it; the service has instructions only for granted cases; a pending application lapses) and the payment of annuities on cases the last portfolio review decided to abandon — which is pure waste and is startlingly common.

Tool 8 — Portfolio review sheet

FAMILY: ______________  PRIORITY: ______  FILED IN: ____________

1. Invention, two sentences: _______________________________
2. Product / program: ______________________________________
3. Status by country: ______________________________________
4. Spent to date: $______   Remaining 10-yr cost: $______

5. DOES IT DO ANY OF THESE?
   [ ] EXCLUSIVITY — covers our product against copying, in a
       country where that matters
   [ ] LEVERAGE — reads on a competitor's product; useful in a
       cross-license, negotiation, or counterclaim
   [ ] DETERRENCE — visible and shapes competitor behavior
   [ ] TRANSACTION VALUE — materially affects diligence

   If NONE are checked → abandonment candidate.

6. THE QUESTION: would we acquire this asset today, at today's
   remaining cost of ownership?    YES / NO

7. RECOMMENDATION
   [ ] Maintain as is
   [ ] Maintain, reduce to countries: ______________________
   [ ] File a continuation to capture: ______________________
   [ ] Offer for sale / license
   [ ] Abandon

Reviewer: __________  Decision: __________  Date: ________

Annotation. Item 6 is the whole tool. Most portfolios contain a substantial percentage of families where the honest answer is no, and they persist because nobody has ever been asked in those words. Note also that the most common correct recommendation is not "abandon" but "reduce to countries" — the family is worth keeping, and five of its eight jurisdictions were filed by inertia.

Tool 9 — Five-year cost model

                          Y1     Y2     Y3     Y4     Y5
NEW FILINGS
  Provisionals (n x $)    ____   ____   ____   ____   ____
  Non-provisionals        ____   ____   ____   ____   ____
INTERNATIONAL
  PCT filings             ____   ____   ____   ____   ____
  National phase entries  ____   ____   ____   ____   ____
    (= families that filed PCT ~18 months ago x countries)
PROSECUTION
  US                      ____   ____   ____   ____   ____
  Foreign                 ____   ____   ____   ____   ____
  Oppositions / appeals   ____   ____   ____   ____   ____
MAINTENANCE
  US maintenance fees     ____   ____   ____   ____   ____
  Foreign annuities       ____   ____   ____   ____   ____
OTHER
  Searches / FTO          ____   ____   ____   ____   ____
  Translations            ____   ____   ____   ____   ____
                          ----   ----   ----   ----   ----
TOTAL                     ____   ____   ____   ____   ____

DRIVERS (state explicitly)
  Disclosure rate: ____/yr   Filing rate: ____/yr
  Average countries per family: ____
  Annuity escalation assumption: ____%

Annotation. The national phase line is forecastable — it is a function of the PCT applications filed eighteen months ago and the jurisdiction strategy — and almost nobody forecasts it, which is why it arrives as a surprise. The annuity line is back-loaded; a portfolio that has been filing steadily for eight years has an annuity wave arriving that an annual budget conceals. Show the CFO the forecast, not the invoice; unpredictability, not amount, is usually the real objection.

Tool 10 — Docket transfer protocol

For a firm change, a provider change, or an acquisition.

PHASE 1 — INVENTORY (days 0-14)
  [ ] Complete docket obtained from the outgoing party, in a
      machine-readable format
  [ ] Reconciled against the in-house register
  [ ] Every case in either list accounted for in both
  [ ] All deadlines in the next 12 months listed separately

PHASE 2 — TRANSFER (days 14-45)
  [ ] Case-by-case transfer with WRITTEN ACKNOWLEDGMENT from the
      receiving party of responsibility and next deadline for EACH
      case (not a bulk acknowledgment)
  [ ] Powers of attorney and agent changes filed per jurisdiction
  [ ] Annuity instructions re-issued and confirmed
  [ ] Foreign associates notified of the new instructing party

PHASE 3 — OVERLAP (days 45-105)
  [ ] Outgoing party remains on the docket, monitoring only
  [ ] Any deadline in this window confirmed by BOTH parties

PHASE 4 — RECONCILIATION (day 135)
  [ ] Full three-way reconciliation
  [ ] Cases with no responsible party identified and fixed
  [ ] Written confirmation the transfer is complete

ACQUISITIONS — ADDITIONAL
  [ ] Day 30: annuity instructions in force for every acquired case
  [ ] Day 90: assignments recorded in every jurisdiction requiring it
  [ ] Day 180: acquired families run through the jurisdiction
      strategy and portfolio review criteria
  [ ] Encumbrances checked: joint development, government funding,
      standards commitments, customer licenses, security interests,
      unexecuted inventor assignments

Annotation. Phase 2's insistence on per-case acknowledgment is the point of the protocol. A bulk transfer with a spreadsheet and a cover email produces exactly the gap this is designed to close: each side believes the other is watching a deadline that neither is. The overlap in Phase 3 costs very little and covers the period when the gap would otherwise be live.

Tool 11 — The one page on the wall

Everything above compresses into a single page that should exist somewhere visible.

JURISDICTION TIERS
  Tier 1: ____________   Tier 2: ____________

THE THREE GATES
  Gate 1  Priority filing?      Decided by: __________
  Gate 2  PCT/Paris at mo. 10?  Decided by: __________
  Gate 3  National phase mo. 28? Decided by: __________

THE FOUR HARD DATES (from priority)
  6 mo (designs) · 12 mo (Paris) · 18 mo (publication) · 30 mo (NP)

THE THREE STANDING RULES
  1. No foreign-first filing on a US-made invention, ever.
  2. Nothing public before the priority filing.
  3. Internal deadline = statutory deadline minus 60 days.

THE ANNUAL EVENTS
  ______ : portfolio review (with abandonment authority)
  ______ : annuity reconciliation (three-way)
  ______ : jurisdiction strategy refresh
  ______ : competitor product mapping

Annotation. Rule 1 exists because 35 U.S.C. § 185 can invalidate a United States patent for a foreign filing made without the license required by 35 U.S.C. § 184, and the defect is usually discovered years later in someone else's diligence. Rule 2 exists because absolute novelty is unforgiving. Rule 3 exists because every missed deadline in this practice area was, sixty days earlier, a decision nobody had made yet.

Related documents

This toolkit is general information, not legal advice, and does not create an attorney-client relationship.