Posts Tagged: "inovia"

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.

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 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.

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.

The third annual U.S. IP Trends Survey, sponsored by inovia, is now open for U.S. patentees and your input is needed to make the survey a success. The results of the survey will provide an in-depth look at the global outlook and foreign filing strategy of U.S. companies and universities. It is anticipated that the survey will take only between five to fifteen minutes to complete, and responses will remain strictly confidential. Only aggregate, anonymous information will be made public. Click here to take the survey.

1.3 billion people simply cannot be ignored, that much is certainly true. In my experience, however, when potentially ridiculous sums of money are at issue people, including otherwise shrewd business executives, suddenly seem to lose double digit points off their IQ. Believing that you can successfully navigate the potentially treacherous waters of doing business with China without careful planning and competent, experienced counsel is simply naive.

A PCT application doesn’t automatically lead to global patent protection. Instead, you eventually need to apply for patents in each of the countries and regions where you wish to pursue patent protection. This involves filing separate applications at the “national stage”, which occurs 30 months (31 months in some countries) after the priority application’s filing date.

The survey assesses the impact of the U.S. economy on global IP strategies for 2011, and is available for free to anyone interested in the results. The survey includes a number of interesting findings, including among these are that 88% of respondents say they were in favor of a European Wide Patent System (which isn’t surprising really), only 19% of respondents said they filed fewer patent application in 2010 (which probably contradicts the convention wisdom of many) and 46% of respondents brought work in house in 2010 (which might not bode well for firms heavily leveraged on work from large corporations).

It is no longer news that the United States Patent Office is hopelessly behind, and many inventors and the companies they work for are waiting extraordinary periods of time to even get a patent examiner to pick up their patent applications for a substantive review. This has caused many inventors to indefinitely have their dreams, hopes and aspirations put on…

I am writing this article from 32,000 feet as I fly across country to teach the PLI Patent Bar Review Course in Costa Mesa, California, which is just inland from Newport Beach, and not far from Huntington Beach and Laguna Beach, places I would rather be than almost anywhere else in the world, although Hawaii and New Hampshire are very…

Many of the patent owners, their IP departments and patent attorneys we speak to are under budget pressure. This is especially the case in the essential – but relatively high-cost – area of international patent protection. A recession might last a year or two, but patents last for twenty years. It’s therefore a delicate balancing act to reduce costs whilst…