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Media Coverage Article

Fish's John Pegram quoted in World IP Review article "Greener pastures for US patents"

November 30, 2016

Media Coverage Article

Fish's John Pegram quoted in World IP Review article "Greener pastures for US patents"

November 30, 2016

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John Pegram (Senior Principal, New York, NY) was quoted in the World IP Review article, “Greener pastures for US patents.”

WIPR investigates if Brexit will force US patent owners to shun the UK and seek protection in other countries.

 “When the European Patent Office (EPO) was established, the focus of US companies largely turned here in terms of filing,” says John Pegram, senior principal at Fish & Richardson.

One of the main worries surrounding Brexit seems to be the uncertainty around the new patent landscape.

“The country will go from being in the leadership of the EU and having full access to the single market, to a situation where it’s very questionable what will happen over the next ten years or more,” Pegram cautions.

“after Brexit, it’s inevitable that some companies will need to find a new staging post that is actually inside the EU.”

He explains that there has been a big battle between industry and the EPO over maintenance fees of the unitary patent, an issue he believes will be a determining factor if it comes into force.

“Around half of the companies that file in Europe don’t file in more than three countries,” Pegram says.

He adds: “The EPO has suggested that companies will use the unitary patent because it would include countries with major container ports, such as Belgium and the Netherlands, where importation is likely to occur.

“Looking forward, if the unitary patent comes into force, patent owners would receive a fairly broad coverage at a lower cost.”

Pegram has spoken to some executives at Japanese companies that, instead of filing at the EPO, are filing only in Germany.

“The companies are filing only in Germany on the basis that a competitor who is selling across Europe will be doing business in the country.”

“Together, Canada and Mexico are about the size of the UK market, with a larger population, so there is a great potential for growth,” says Pegram.

To read the full article, click here.

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