Posts Tagged: "international patent protection"

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.

These IP5 Offices together handle approximately 80% of the world’s patent applications. The IP5 began meeting in 2007 and have since worked together to explore ways to further optimize their joint efforts to improve quality and efficiency of the examination process and to explore and optimize work sharing opportunities between the Offices.

Translating patents isn’t like translating press releases or whitepapers. These materials can be reworded, adjusted, modified, and reformatted to accommodate linguistic nuances. Patents, however, require very specialized and precise technical and legal language. In addition, every patent’s style, structure, and formatting must adhere to the particular rules of the patent office where it is being filed. Patent translation demands a level of expertise and experience that is beyond the ability of many translation providers.

As readers will no doubt be aware, Australia is one of the jurisdictions in which Apple is currently pursuing litigation against its Android-based smartphone and tablet competitors. The claims and counter-claims by Apple and Samsung are the subject of a trial in the Australian Federal Court in Sydney which has now been extended into the first months of 2013. According to reports, as many as 22 Apple patents have been asserted against Samsung, although it is as yet unclear how many of these will actually be pressed at trial. A number of the asserted patents are innovation patents. An ‘innovation patent’, is in many respects unique to Australia. An innovation patent provides a ‘second tier’ right, with a lower barrier to validity than the conventional inventive step test, and a shorter maximum term of protection of just eight years.

For the international community, however, there is an important change slated for September 16, 2012.  The AIA will changewho is entitled to be an applicant in U.S. national applications. This change will impact applicants who have filed under the Patent Cooperation Treaty (PCT).  The change removes the requirement that the inventors be named as applicants solely for the purposes of U.S. designation.

It is one thing to cut costs, but to borrow a popular political phrase – you want to cut with a scalpel, not a cleaver. Thus, keeping in mind the ultimately end goal at every step will allow you to engage cost cutting strategies without compromising your patent project. Of course, the end goal is to obtain the broadest, strongest patent portfolio; obtaining patents in a variety of jurisdictions where meaningful business opportunities exist.

The moral of the story is this: First, pick the countries where you want to seek patents wisely, filing obtaining a patent in a country only when there is an articulable business strategy. Second, remember to consider not only the cost of obtaining a patent in the first instance but also the cost of maintaining that patent once it has been obtained, if you can’t afford to keep the patent maintained then what in the world are you doing obtaining the patent in the first place? Finally, for goodness sakes don’t waste precious resources by negligently or accidentally allowing patents to go abandoned, only to have to revive them once you realize the mistake.

There is no such thing as a world-wide patent, although there is something that approximates a world-wide patent application that can result in a patent being obtained in most countries around the world. This patent application is known as an International Patent Application, or simply an International Application. The international treaty that authorizes the filing of a single patent application to be treated as a patent application in countries around the world is the Patent Cooperation Treaty, most commonly referred to as the PCT. You can file an International Application pursuant to the rules of the PCT and that application will effectively act as a world-wide patent application, or at least a patent application in all of those countries that have ratified the PCT, which is virtually all of the countries where you would want a patent anyway.

The report shows that the mood for 2011 was cautiously optimistic compared to previous years, with fewer organizations experiencing budget reductions and a greater percentage of IP tasks going in-house or being outsourced in order to reduce costs and retain control. This year saw less than half of those surveyed working on a reduced IP budget going into 2012, compared to nearly two-thirds of respondents in last year’s survey. However, the bulk of respondents don’t expect to increase the number of patent families filed in 2012, indicating the persistence of a “do-more-with-less” attitude as the economy slowly recovers.

The thing that struck me most from these survey results was the superiority of USPTO searches. I’m sure you have heard the same criticisms and joking that I have. Many, particularly Europeans, love to criticize and even make fun of the searches done by the USPTO. If anything these survey results suggest that the USPTO does a better search than is done in the UKIPO. After all, under UKIPO practice, examiners only cite extra documents if they are more relevant than those already found by the UK search. So when they rely on US references that means they must have been more relevant than what they found. So much for the alleged inferiority of USPTO searches.

The United States Patent and Trademark Office (USPTO) and Hungarian Intellectual Property Office (HIPO) signed a Memorandum of Understanding making permanent the Patent Prosecution Highway (PPH) program between the two offices and setting forth the common desire to implement further developments of the PPH program during a high level event in Budapest honoring Hungarian inventors and innovative companies.

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.

It is with great interest that we at Sentry IP read the report the United States Patent and Trademark Office made to Congress earlier this year on “International Patent Protections For Small Businesses”. The USPTO’s report highlighted the link between the ability of small US businesses to secure international patent protection and the availability to these businesses of a number of commercial advantages, such as attracting investor capital and accessing foreign markets by means of licensing, franchising and exporting. Research suggests that these advantages are directly related to the general economic health of the USA, with improved levels of manufacturing and production leading to job creation.

Despite difficult economic conditions worldwide, international patent filings under the WIPO-administered Patent Cooperation Treaty (PCT) set a new record in 2011 with 181,900 applications – a growth of 10.7% when compared with 2010, and the fastest growth since 2005. China, Japan and the United States accounted for 82% of the total growth, and the Chinese telecommunications company ZTE Corporation was the largest filer of PCT applications in 2011. 2011 also saw the highest number of international trademark applications ever filed under WIPO’s Madrid System for the International Registration of Marks (“Madrid system”) with 42,270 applications, or a 6.5 % increase compared to 2010.

Indeed, competing globally is a prerequisite to success for most companies in what is an ever increasingly global marketplace. To compete globally American firms engage in licensing, franchising, or exporting. For many small companies it is patent protection that provides the only means to obtain an advantage over established industry leaders. Patent protection prevents established industry leaders from simply copying new innovations, and aids small businesses and start-ups in attracting investor capital needed to grow, build market share, and create jobs. Unfortunately, small companies face significant financial challenges in acquiring, maintaining, and enforcing patents outside the United States. What they need is a strategy to lay the foundation for foreign rights, building off a credible and appropriate U.S. patent filing.