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Universities: Get One More Year on your PCT Patent Filing


Written by Gene Quinn
President & Founder of IPWatchdog, Inc.
Patent Attorney, Reg. No. 44,294
Zies, Widerman & Malek
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Posted: November 20, 2012 @ 9:05 am
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The decision whether to file a patent application is not just limited to whether an innovation has been achieved, but whether there is enough of an advance to make it worthwhile to undertake the cost of preparing and ultimately obtaining a patent.  For universities the question is an even more difficult one than you might think because universities are almost universally engaging in early stage, highly-speculative research.  Thus, the decision to file typically needs to come very early on in the process so that the inventor, typically an academic or researcher affiliated with the university, can publish findings and share information with the world.

Universities produce a lot of patentable inventions, but the patent laws around the world do not provide special treatment for those innovations that are based on foundational scientific research that may be years away from fruitful commercial application.  What this means in patent terms is that once a university files a patent application the clock starts ticking. If, for example, a university files an international patent application there will be 30 months from that filing within which to decide whether to pursue patent rights in the Member Countries that have signed on to the Patent Cooperation Treaty.  That same 30-month deadline applies even if the first filing is a U.S. provisional patent application or a U.S. nonprovisional patent application, both of which can provide support for a later filed international patent application.  For more information see PCT Basics: Obtaining Patent Rights Around the World and PCT Basics: Understanding the International Filing Process.

Scientifically speaking, there is really very little time the point in time that work in a university laboratory is concrete enough to call “an invention” and capable of description in a patent application until the 30-month deadline to pursue rights in various countries around the world. What that means is that universities are constantly faced with a difficult decision. Do they undertake the expense of seeking patent protection in a variety of locations or do they forego the invention? This decision is particularly problematic for universities engaged in the life sciences where there is of necessity a very long time horizon from conception of the invention to even knowing whether there is a legitimate opportunity for commercialization.

According to Justin Simpson, founder and CEO of inovia, “universities drop 80% of their cases” rather than pursue them past 30 months.  Upon learning this Simpson thought that there had to be a way that universities could continue to keep the pathway to a patent open.

“When a university drops a patent application anyone overseas can copy without repercussions. These universities have spent maybe up to $20,000 for initial drafting and international phase, which becomes wasted money with nothing to show for it when they choose to drop a case at 30 months,” Simpson said.

As Simpson learned more and more about this dilemma facing universities he conceived of a rather unique plan that would allow a university to continue to seek protection in Europe and other English speaking countries for a fraction of what it would cost under a more traditional pathway.  What is the pathway? Well, it leverages the backlog of patent applications worldwide and the reality that to keep a case alive very little really needs to be done during the first year post entry into national phase (i.e., the first 12 months after the 30-month international phase has expired).

“Almost all of the countries on the list nothing will happen within the first year because of the backlog.  In Europe there are some things you need to do within the first year, but this can be accomplished with small non-substantive tasks that can keep the application alive for a year,” Simpson explained.

Following the inovia One More Year plan, universities can spend another year further developing the technology, and can also continue negotiating licenses.  This additional 12 months could be quite valuable because sometimes universities will engage in licensing discussions but their commercial counterparts will know that the closer it gets to the 30-month date without a deal the more likely the university will be to simply abandon the application.  This can create significant downward pressure on licensing royalties a university would accept.  If they could economically prolong the pendency for 12 more months in scenarios where there are ongoing licensing talks it would make it more difficult for a potential licensee to simply play a waiting game.

All of this prompted Simpson to contrive a plan that would allow universities, for a cost of $10,000, to file into Europe and three other English-speaking countries at the 30-month deadline, thereby keeping prospects open.  Why English speaking countries? Because that eliminates translation fees, but also provides a still rather expansive potential patent footprint.

But how can this be accomplished for $10,000?  Well, inovia,is one of the largest foreign filing providers in the world, and has a vast network of patent attorneys and patent agents in virtually every jurisdiction around the world.  Simpson negotiated with the patent agents and patent attorneys in the inovia network to get preferential pricing based on a minimalist approach. This preferential pricing is then passed on to the Universities to help them keep their cases alive for another 12 months.  inovia also has the technology backbone that streamlines the processes, making it feasible. “Our technology makes it extremely easy for foreign agents so they have to do very little work to accomplish a filing,” Simpson explained.

So what is in it for the patent attorneys and patent agents in the inovia network? How could you get so much work done in so many different jurisdictions for $10,000? It is all about doing something to help keep the cases alive knowing that if and when the application becomes important there will be prosecution work that will go to those foreign associates who are already on the case, albeit only in order to keep the case alive for that additional 12 months.

If you are a university facing difficult decisions about what to continue to pursue and what to give up on your patent applications you should at least make an inquiry to see if the invoia One More Year plan is right for you.

For more information about the International Patent Process please see:

If you are interested in filing an international patent application in the United States, or entering the national stage in the United States based on a previously filed international patent application, please feel free to contact me.

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Posted in: Gene Quinn, International, IP News, IPWatchdog.com Articles, Patent Cooperation Treaty, Patents, Universities

About the Author

is a Patent Attorney and the founder of the popular blog IPWatchdog.com, which has for three of the last four years (i.e., 2010, 2012 and 2103) been recognized as the top intellectual property blog by the American Bar Association. He is also a principal lecturer in the PLI Patent Bar Review Course. As an electrical engineer with a computer engineering focus his specialty is electronic and computer devices, Internet applications, software and business methods.

 

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