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AUTM Meeting: Cost-Effective International Patenting Strategies

Written by Cara Verwholt
Senior Marketing Manager, inovia
Posted: March 26, 2012 @ 7:20 am

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From Left to Right: Matthew Bryan, Alan Kasper, Derek Eberhart and Susanne Hollinger.

Recently, the Association of University Technology Managers (AUTM) held its annual meeting at the Anaheim Marriott in California.  Last year’s AUTM venue was Las Vegas, which offered attendees a variety of dining and nightlife options, and Anaheim was no different.  With Disneyland just around the corner, attendees at the Anaheim AUTM meeting had plenty of options for nightlife and networking.

I attended on behalf of inovia; it was our third year exhibiting at AUTM and our second year presenting a panel titled “Cost-Effective International Patenting Strategies” for AUTM attendees.  The panelists for this session were Matthew Bryan (Director, Patent Cooperation Treaty (PCT) Legal Division, World Intellectual Property Organization), Derek E. Eberhart, Ph.D., (Senior Licensing Manager, University of Georgia Research Foundation, Inc.), Susanne Hollinger, Ph.D., J.D., (Chief Intellectual Property Officer and Associate Director, Office of Technology Transfer, Emory University) and Alan J. Kasper (Partner & Director of the International Department, Sughrue Mion, PLLC).  The panelists discussed IP portfolio strategy, cost-effective foreign filing, Patent Prosecution Highway (PPH) programs, and effective use of the Patent Cooperation Treaty (PCT).

Panel Presentation at AUTM

Justin Simpson

On Friday, March 16, inovia founder Justin Simpson kicked off the panel by providing an overview to foreign patent filing, specifically PCT vs. Paris Convention filing, the PCT process, and the European validation process. He also provided a rough guide to estimating international patenting costs, which can get quite expensive. He referenced paid and subscription-based cost calculation tools, as well as the inovia 1-click quote tool.

The university panelists then discussed IP portfolio strategy and their recommendations for evaluating international patenting, as well as their tips for keeping costs down.  Susanne Hollinger advised TTOs against applying blanket rules to their international patenting decisions, such as “we only file if we have a licensee.”  International filing has been an important part of Emory’s strategy, as more than half of their royalty money comes from technologies filed internationally, and they make international filing decisions on a case-by-case basis.

Derek Eberhart also encouraged TTOs to take ownership of the foreign filing process, as opposed to just leaving that up to their U.S. counsel, who may not have cost-saving interests at heart.

For his part, Alan Kasper shared encouraging results from the Patent Prosecution Highway (PPH).  In 2011, USPTO allowance rates on PCT-PPH cases were 91%, compared to 49% for all cases, and this translates into cost savings for applicants.  The cost savings are typically between $3,000 and $5,000 per action, which can net up to $15,000 in savings per case.

The effectiveness of the PPH came up in the Q&A session.  Kasper shared that USPTO examiners were originally reluctant to trust requests that came through the PPH program; however, David Kappos, the Director of the USPTO, is committed to stopping this and views the PPH as the “way to go” in the future.

Finally, Matthew Bryan discussed how TTOs and other applicants can use the PCT to their advantage.  Bryan advised the audience to make informed choices when filing a PCT application, such as using the Russian Patent Office as a search authority (since it is very cost-effective).

Bryan also made two important announcements:

  1. As of January 1, 2012, applicants can now indicate in the PCT application if the invention is available for license, which is an option that TTOs should make use of; and
  2. New countries, namely Brunei and Saudi Arabia, are in the works for the PCT, so we look forward to those announcements from WIPO.  The university panelists also asked about Argentina and Taiwan, which are not currently members of the PCT.  Bryan commented that the PCT is working hard to influence Argentina to join.  Taiwan is also on their radar, but presents more of a challenge since it is not a UN member state.

The 90-minute session was packed and unfortunately a few audience questions had to go unanswered when the program came to an end.  If any IPWatchdog readers were at the panel and have questions, or are just curious about learning more about cost-effective international patenting strategies, please feel free to contact me and I’ll connect you to the appropriate resource.

AUTM Exhibition Hall & Closing Reception

The annual meeting ran from Wednesday, March 14 to Saturday, March 17 and the exhibit hall was open on Thursday and Friday.  I spent most of my time in the exhibit hall, I can’t comment on the educational sessions other than “Cost-Effective International Patenting Strategies,” although I heard good feedback from many of the attendees that I spoke to at our booth.

Thursday was a long day in the exhibit hall (open from 7am to 6pm), but the energy and traffic in the hall was good.  We were giving live demos of our foreign filing platform, inovia.com to a very captive audience and met many new university, law firm and corporate contacts.  If you weren’t at AUTM and want to learn more about inovia.com, you can view a demo video or sign up for an upcoming live webinar demonstration on our website.

We were also handing out highlights from our 2012 U.S. Global Patent & IP Trends Indicator, an annual survey conducted by inovia to examine the trends having the greatest impact on the foreign filing strategies of U.S. patentees.  The full survey will be available for download from our website later on this month.

The closing reception on Saturday evening brought this year’s AUTM conference to a close.  I really enjoyed attending this year, connecting with colleagues, and meeting new people, and I look forward to next year’s AUTM Annual Meeting, which will be in San Antonio, TX.

About the inovia

inovia is one of the largest foreign filing providers in the world. Over 1000 companies, law firms and universities have used our online platform, inovia.com, to reduce the cost and complexity of their PCT national stage entry, European patent validation and patent translation work.

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