Posts Tagged: "international patent application"

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 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.

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.

The appeal of the PCT process is that it enables patent applicants to file a single patent application and have that single, uniform patent application be treated as an initial application for patent in any Member Country. This single, uniform patent application is what is referred to as the international application. Filing an international patent application to start the patent process can frequently be a wise move if you are contemplating securing patent rights in multiple countries. It is, however, important to understand that obtaining international patent protection is not cheap. It is also important to understand that the international patent application you file will not mature into an international patent.

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).

EDITORIAL NOTE: What follows was submitted by Ron Katznelson as a comment to Why a Global Patent System is a Bad Idea, which took issue with the articulate position of Microsoft’s Deputy General Counsel Horacio Gutierrez that a global patent system is necessary. It is republished here as an article with the permission of Dr. Katznelson. *********** What seems to be…

A little over a week ago, in a blog post written by Microsoft’s Deputy General Counsel Horacio Gutierrez started what will certainly become one of the most profound debates the patent and innovation industry has seen in a very long time, and perhaps the most profound debate that has occurred since Thomas Jefferson and James Madison argued whether the fledgling…