Why Multi-Jurisdiction Patent Filing Strategy Should Follow Market Access, Not Habit

Introduction : International intellectual property (IP) strategy has long been shaped by an important cognitive bias: the "default territory list" problem. The instinctive response of a company ready to take a new product from R&D to a global patent portfolio is to send the patents through a predetermined list of jurisdictions usually limited to the USA, the main European countries, and the major Asian manufacturing centres.

This playbook simply focuses on filing patents as a routine administrative procedure, instead of an active and dynamic tool of commercial leverage. It takes for granted that the intrinsic value of a patent is the same in different countries, without considering the significant differences in litigation practices, possible remedies, and procedure.

Patent filing is guided by administrative convenience and precedent, but by the actual realities of market access, commercial presence, and reasonable enforcement mechanisms.

The United States and the United Kingdom are two contrasting regulatory, commercial, and procedural environments, and this article is dedicated to comparing them, to show how relying on habit instead of strategy drains corporate resources and results in highly fragile portfolios.

Legal Provisions

It is important to assess the international treaties that regulate priority rights, as well as the domestic law that governs the patent litigation process in the UK and US, to understand the mechanics of multi-jurisdiction filing.

The International Deferral Framework : International patent strategy rests on two treaties: The Paris Convention [1] and the Patent Cooperation Treaty (PCT) [2].

Paris Convention, Article 4 grants a "right of priority" of 12 months. Once an application is filed in a one-member country, it can be filed in others within a year while keeping the original filing date.

PCT (Articles 8, 22, 39) extend this further. According to Article 8, priority may be claimed from an earlier national application for a PCT application. Articles 22 and 39 provide for deferral of the very expensive “national phase” (when applications are filed, translated and paid for in countries) up to 30-31 months after the priority date.

These provisions are not mere administrative formalities meant to make global coverage automatic; they are, in effect, tools for postponing capital investment. They buy a business with up to 2.5 years of runway to determine whether a market is accessible, whether it is commercially viable, and whether there is real competitive activity, before committing significant money to national patent offices.

Statutory Framework of the United States : Once in the US national phase, enforcement is governed by Title 35 of the United States Code (U.S.C).:

(U.S.C.) As per Section III, 35 U.S.C. § 283 [3] has become a highly discretionary hurdle, and has become almost a post-trial remedy.

While, 28 U.S.C. § 1400(b) [4]: The patent-specific venue statute. It requires that patent infringement suit be filed "in the judicial district in which the defendant resides, or in which he is engaged in acts of infringement, and has a regular and established place of business.

Statutory Framework of the United Kingdom : On the other hand, UK patent law has been organized under the Patents Act 1977 [5]:

Section 5: Sets out the rules for claiming priority, making them consistent with Article 4 of the Paris Convention.

Section 89 provides for the domestic legal consequences of international PCT applications, which are treated as national patent applications under the Act which are filed in the UK.

Section 61: Describes the civil actions available in the event of patent infringement, such as injunctions and damages. Most importantly, in the UK the court system applies a commercial perspective to SEPs and to FRAND licensing regimes, very different from that in the US.

Legal Analysis

It is important to consider cost considerations, as well as the changing legal landscape in US and UK courts, to align patent filings with market access.

The Cost Architecture of Habit : Most in-house IP departments still file things out of strategic judgement, not according to a regular routine. As patent filing statistics are regularly calculated by the World Intellectual Property Organization (WIPO), it's clear that a few patent offices are receiving a huge share of the applications, reflecting a common business practice: filing in traditional high-cost jurisdictions, irrespective of where the company's customers, manufacturing partners or competitors are based.

This is a very costly habit to keep. Now let's examine the actual filing, search and examination fees:

United States (USPTO) : Under 37 CFR § 1.16 [6] the large entity cost to file, search and examine an USPTO utility patent is $2,000. Additionally, a granted US patent must be maintained throughout its term of 20 years in regular intervals of $2,150 at 3.5 years, $4,040 at 7.5 years and $8,280 at 11.5 years [7].

United Kingdom (UKIPO) : The basic fee for filing, searching and substantive examination is relatively low, at £405 [8]. The cumulative annual renewal costs for the official fees starting from year 5 (5+10% of £90) through to year 20 (5+10% of £810) is at least £6,160. The total of the official fees alone for the 5-20-year period is £6,160 [9].

These costs are pretty much constant; however, the true financial impact comes from the costs of professional prosecution fees ($8,000 to $15,000 per jurisdiction to overcome office actions) and translation fees ($3,000 to $5,000 per country for languages such as Japanese or German). Companies spend millions of dollars on patents every year, on dozens of patent families, in jurisdictions where they have never operated, never had a competitor and never have a good chance of filing a lawsuit.

The United States: Remedial & Jurisdictional Hurdles : There have been two significant changes in the law that have revolutionized the value of a patent and the locations of its enforcement in the United States.

First, 35 U.S.C. § 283 no longer guarantees a patent owner's ability to prevent an infringer. A court's decision to grant a permanent injunction against an infringing party was virtually always the rule when a patent was determined valid and infringed upon. Since the landmark eBay decision, though, patent owners have to meet a four-part test of equity to obtain an injunction [10].

Under these new rules, it is now very difficult for non-practicing entities (NPEs) or companies who do not have direct competition in the United States to prove “irreparable harm.” As a result, a US patent is no longer a weapon against competition, but more often than not it's a right to future court-imposed royalties. Filing in the USA is much less helpful for businesses whose primary business is to hold absolute market monopoly.

Secondly, the geography of US patent litigation has changed completely with the advent of 28 U.S.C. § 1400(b). Prior to 2017, the Federal Circuit had been holding that a Plaintiff can only sue in a court having personal jurisdiction over the Defendant if the Defendant is actually doing business there. This resulted in a huge influx of cases into plaintiff friendly forums, particularly the Eastern District of Texas (EDTX).

The Supreme Court in TC Heartland reversed this, and moved venue back to where the defendant is incorporated or has a "regular and established place of business" [11].

The “jurisdictional” movement has real-world implications:

• Pre-TC Heartland Venue: Suit allowed wherever the defendant's products had been sold (broad personal jurisdiction), which would focus cases in plaintiff-friendly districts.

• An exception for restriction of venue for a post-TC Heartland venue would be a suit that is restricted to the defendant's state of incorporation or regular business venue. This decentralization means that litigation is multiplied in corporate centers such as Delaware or Northern California.

This makes it more difficult for a patent owner to consolidate multiple out-of-state defendants into a single jurisdiction. Nowadays, it is common to pursue litigation across several states in the US, leading to a massive increase in expenses and complexity of enforcement.

The UK: Injunction Receptivity & Global Leverage : The UK is a smaller market than the US but presents strategic opportunities in its courts.

Compared to the landscape after eBay in the US, courts in the UK have the structure that is more likely to grant injunctions as primary remedies in patent infringement cases. Once infringement and validity are proved, the court presumes for a good deal, that the patentee is entitled to an injunction to stop other people from infringing upon the patent [12].

The Court has a broad discretion to award damages instead of an injunction in accordance with the well-known Shelfer principles [13] set out in the Senior Courts Act 1981, Section 50. However, in cases such as HTC Corp v Nokia Corp, English courts will not be prepared to grant an injunction without a strong reason, such as the patentee's lack of direct competition or the fact that an injunction may inflict hardship on the infringer [14]. This structural predictability affords patent holders a degree of “market-exclusion leverage” which has largely been lost for non-competing patent holders in the US.

An important aspect of UK patent strategy is whether a filing is used for priority only or as a weapon in litigation. A UK filing is an economical method of establishing an early date in the priority-setting process, in normal circumstances, prior to the wider international filings.

However, in practice, the UK has emerged as a key global forum, largely as a result of the way courts have dealt with FRAND licensing.

In Unwired Planet, the United Kingdom Supreme Court has consolidated its jurisdiction to determine the terms of a FRAND licence for a global SEP, where a party wishes to use a SEP in the United Kingdom [15]. If an infringer does not sign the court-ordered global license, the UK court will impose an injunction on the infringer preventing him/her from entering the UK market. This provides patent holders with a tremendous advantage. The UK is a very strategic jurisdiction, in terms of market size, and is utilised in a manner that is very effective in forcing a global competitor to a negotiating table on the merits of one UK patent, for all of their international portfolio.

Relevant Case Laws

Companies need to base their patent decisions on the fundamental precedents that dominate US and UK patent litigation in order to develop a defensible and commercial patent strategy.

eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006)

In particular, the US Supreme Court unanimously reversed the Federal Circuit's “general rule” that courts should grant a permanent injunction whenever they determine a patent has been infringed [16]. Rather, the Court determined that a plaintiff was required to meet a four factor test in equity for an injunction.

Importance : eBay changed the whole point of a US patent. A more realistic assessment of the conflict by licensing rather than by direct market competition is that a court will not likely issue an injunction in the United States for such a company. A business model which depends on a licensing relationship as opposed to direct competition will not likely be able to win an injunction in the United States courts [17]. Businesses need to understand that patents in the United States can in essence be "compulsory licenses" with royalties paid for each use, while the UK courts are much more inclined to enforce patent rights with injunctions.

TC Heartland LLC v. Kraft Foods Group Brands LLC, 581 U.S. 258 (2017)

For patent venue under the statute (28 U.S.C. § 1400(b)), the US Supreme Court has held that a defendant that is a domestic corporation "resides" only in the state where it was incorporated [18]. It may not be held liable for patent infringement in any district where it is only subject to personal jurisdiction.

The decision in TC Heartland has important ramifications for patent strategy, because it has essentially put an end to the patent owners' capacity to routinely drag defendants to plaintiff-friendly courts such as the Eastern District of Texas. In the present day, in order to obtain a patent from the US, a knowledgeable awareness of the location of the company's primary competitors is indispensable [19]. When competitors are based in neutral or defendant-friendly districts, it will be much more expensive to enforce those US patents and this should be a consideration in the initial question of whether to file in the US.

Unwired Planet International Ltd v. Huawei Technologies (UK) Co. Ltd [2020] UKSC 37

Decision: UK Supreme Court decided that UK courts are competent to establish the scope of a global FRAND licence for an implementer and a Standard Essential Patent (SEP) owner [20].

The Court was persuaded by the international nature of telecommunications portfolios that it was "commercial reality" to set a global rate, "because the developer of a standard essential portfolio would not be likely to license it country by country" [21].

Importantly, the Court determined that where the implementer does not enter into the court agreed to global licence the court has good cause to issue an injunction to stop them from entering the UK market [22].

This decision is significant for companies with SEPs in industries such as 5G, IoT, Wi-Fi, etc., because it could make the patent a huge asset in their filing strategy. A UK patent can be employed to obtain a worldwide licence even if the UK accounts for a small proportion of the competitor's sales. So, telecommunications and smart-tech firms should not only target the bigger market of consumers, such as the United States, but also strive to secure a UK patent for the technology they are going to produce to be able to leverage the technology internationally.

The practical implications/industry relevance

Legal change and pressure has made a generic "one size fits all" checklist filing impossible. Companies need to move towards an extremely specialised and industry-specific framework.

Sector-Specific Application

Medical Devices and Digital Health : Medical device manufacturers also often create “cloud” based integrated products, which are made up of physical hardware and software.

Typically, the largest market for these products is the US, so a US patent is important. Due to the venue restrictions of TC Heartland, however, medical device startups will need to find out where the main medical device competitors located in the United States are incorporated. If the competitor is incorporated in the state of Delaware but its R&D operation is located in California, then the patent holder must be ready to litigate in that particular jurisdiction.

Under the UK MHRA it is generally recommended that if there is no definite plan in place to market the product in the UK, then it should not be pursued through a UK patent, unless a key competitor is actually manufacturing the product in the UK.

Internet of Things (IoT) and Connected Automotive Technology.

Standard protocols are the predominant aspect of the patent landscape for companies developing connected technologies (such as smart home devices or connected vehicles).

UK Focus: After Unwired Planet the UK is a key jurisdiction for this sector. One UK patent will allow an IoT patent holder to try to obtain a worldwide FRAND license from an auto manufacturer or device manufacturer. This makes a UK patent a very high leverage asset, and a strong player in its home market.

US Focus: Obtaining an injunction for non-competing technologies is far more difficult in the US, where a case like eBay makes it very difficult to obtain such an injunction. So, the UK is often a better place for licensing negotiations than the US.

The Market-Driven IP Allocation Framework is a framework designed to allocate IP rights.

To avoid the "default territory" trap, corporate IP Departments should follow this three step process:

STEP 1: Map the Revenue Footprint. Determine where your desired clientele purchases items and where your main competition produces or sells items. Never pay a patent in a country where there is no market for your product or where your competitor does not have operations.

Step 2: Run the Enforcement Audit. Research local law and do not proceed into national phase without first assessing the local law climate. Ask:

• Is there an injunction we can get here under eBay?

• Where would we have to sue our competitor under TC Heartland?

• Does this country have the ability to provide an international leverage as the UK does for SEPs?

Step 3: Execute the PCT Runway Test. Don't go into national phases right away. Take every one of the 30-month PCT periods to see if the product fits the market, if competitors move, and if the commercial opportunity has not appeared in any jurisdiction, get rid of it.

Conclusion

The time of reflexive, default-list patent filing has passed. Patents are expensive things to file, as they are very localized and complicated in a world of global economy.

The point of filing should be directly tied to access to the market, commercial footprint, and realistic enforcement path in order to maximize the return on investment of the IP dollar. Knowing what happened in cases such as eBay, TC Heartland and Unwired Planet can help businesses upgrade their patent portfolios from a collection of costly certificates to potent and strategic commercial assets.

With budgets under closer examination, the best patent departments will be the ones that view patent strategy as a living business asset, with every dollar invested providing a clear, defensible market advantage.

Author: Tanishka Gora, in case of any queries please contact/write back to us via email to chhavi@khuranaandkhurana.com or at  Khurana & Khurana, Advocates and IP Attorney.

References & Endnotes

1. Paris Convention for the Protection of Industrial Property, opened for signature 20 March 1883 (as amended), art 4.

2. Patent Cooperation Treaty (PCT), opened for signature 19 June 1970, 28 UST 7645 (as amended), arts 8, 22, 39.

3. 35 U.S.C. § 283.

4. 28 U.S.C. § 1400(b).

5. UK Patents Act 1977, § 5, 61, 89.

6. 37 CFR § 1.16; USPTO, 'USPTO Fee Schedule' (Effective 2026) https://www.uspto.gov/.

7. 37 CFR § 1.20(e)-(g).

8. UK Intellectual Property Office (UKIPO), 'Patent Fee Schedule' (Effective April 2026) https://www.gov.uk/government/organisations/intellectual-property-office.

9. ibid.

10. eBay Inc v MercExchange, LLC, 547 U.S. 388, 391 (2006).

11. TC Heartland LLC v Kraft Foods Group Brands LLC, 581 U.S. 258, 267 (2017).

12. Patents Act 1977, s 61(1)(a).

13. Shelfer v City of London Electric Lighting Co [1895] 1 Ch 287; as modified by Coventry v Lawrence [2014] UKSC 13.

14. HTC Corp v Nokia Corp [2013] EWHC 3778 (Pat) [18]- [22] (confirming that the Shelfer test remains the baseline starting point for evaluating stays of injunctions or damages in lieu, and that a permanent injunction remains the standard remedy once infringement is established).

15. Unwired Planet International Ltd v Huawei Technologies (UK) Co Ltd [2020] UKSC 37, [90].

16. eBay Inc v MercExchange, LLC, 547 U.S. 388, 394 (2006).

17. ibid 391-392.

18. TC Heartland LLC v Kraft Foods Group Brands LLC, 581 U.S. 258, 267 (2017).

19. Unwired Planet International Ltd v Huawei Technologies (UK) Co Ltd [2020] UKSC 37, [90].

20. ibid [15] (Confirming that the English courts have jurisdiction to determine the terms of a global license because setting a worldwide rate represents the commercial practice of a willing licensor and licensee in this sector).

21. ibid [164] (holding that under Section 50 of the Senior Courts Act 1981, damages in lieu of an injunction are not an adequate remedy, making an injunction the appropriate, standard equitable relief if an implementer refuses a global FRAND license).