Posted by Elizabeth Golluscio on Fri, Aug 13, 2010 @ 01:40 PM
Last week inovia had the opportunity to participate in an audioconference sponsored by Technology Transfer Tactics entitled: International Patenting Strategies – Cost-Effectively Expand Your Market and Boost Your TTO’s Revenues.
During the 90-program, Jeff Sweetman, Head of Professional Services and a Patent Attorney at inovia, gave an overview of the PCT and European validation processes, shared foreign filing best practices, and highlighted results from inovia’s 2010 U.S. IP Trends Report. Susanne Hollinger, Ph.D., J.D. of Emory University then shared insights from the university perspective, including an overview of Emory’s patent filing practices and a discussion on licensee issues.
The program is now available for download on the Technology Transfer Tactics website. Click here for more information.
Posted by Jeff Shieh on Tue, Aug 03, 2010 @ 10:41 AM
I had the honor of speaking at the NAPP Annual Meeting recently.
My presentation focused on foreign filing best practices and ways to ensure that your US approach would not undermine your global patent opportunities. One attendee asked a question which I feel would be of interest to our blog subscribers.
A portion of my presentation discussed the strategy of introducing multiple dependent claims at the PCT national stage as a way of reducing excess claim fees in foreign countries. As you may know, in all countries except the US, multiple dependent claims are counted as only a single claim, and it’s possible to have nested multiple dependencies. Therefore, claims in multiple dependent form can sometimes be a useful tool in reducing claim fees while maintaining the scope of the claims.
The question that arose was why an applicant would choose to enter claims in multiple dependent form at the 30 or 31 month date rather than including them in the initial priority or PCT application.
In our experience, a decent proportion of US attorneys don’t even think about multiple dependent claims when drafting the initial application. Often, the client is not sure whether they want to enter the international arena anyway, so their attorneys tend to tailor the application with US filing and prosecution in mind.
Accordingly, I focused my presentation on the idea of amending claims to include multiple dependencies at national phase entry outside the US.
However, it’s definitely worth considering whether including multiple dependencies when initially filing the PCT application might reduce your client’s costs in the long run. If it’s likely the application will enter the national phase in several countries, it’s easier to start with multiple dependencies because you don’t need to then introduce them to each and every country (often at additional cost) during national phase entry or prosecution.
Even if you need to enter the national phase in the US, the cost of amending once to go back to single dependency form at US national phase entry is most likely outweighed by the savings in time and foreign attorneys’ fees in other countries that can use the multiple dependencies as filed with the PCT.
Of course, before you start taking this approach, you must be sure you understand how multiple dependencies work, including their advantages and disadvantages. In practical terms, sometimes it’s easier to start with a single dependency approach then add in multiple dependencies after the claims are drafted, but sometimes it works better the other way.
However, sensibly used in the right circumstances, multiple dependencies are a great way of increasing the scope-to-cost ratio.
Posted by Elizabeth Golluscio on Mon, May 24, 2010 @ 11:20 AM
As we alluded to in our last blog post, the cost of translation work can be a crippling factor when it comes to seeking patent protection. When looking to outsource your translation work, you should remember that translating your claims is just as important as drafting them and should only be left to experts.
Here at inovia, we are pleased to announce iptranslator — our new patent translation product offering to support foreign filing.
What sets us apart from other translation firms is our “double certification” methodology: (1) each patent application is translated by a native speaker who is skilled in the relevant technical field and then (2) the translation is reviewed and approved by a local patent attorney.
Already used in conjunction with our PCT national phase entry and European validation products, we have been doing expert IP translations for over 8 years and have translated over 20 million words into 41 languages.
Posted by Jeff Shieh on Tue, May 18, 2010 @ 09:52 AM
With IP budgets experiencing significant cutbacks in the last year, many applicants have struggled to maintain the same level of global protection they were able to achieve in “fatter” times. As a result, many applicants must grudgingly reduce the number of countries selected for national stage entry for their PCT applications.
In many countries, translation of the PCT application is a major component of the cost for national stage entry. As such, translation costs certainly play a key role when applicants decide where to seek patent protection.
Aside from outsourcing your translation work, another tip for stretching your IP budget is to file in countries which use the same translation. For example (assuming an English specification), the translation into Spanish required to enter into Mexico can also be used for entry into Colombia and other Spanish-speaking South and Latin American countries.
Similarly, a Chinese translation prepared for use with a Taiwanese filing can often be used as a basis for the translation needed for China (though note that Taiwan is not a PCT country, so the translation would have been prepared earlier for direct filing there, often at the same time the PCT was lodged).
Given that translation costs can run into the thousands of dollars, applicants exercising this strategy can realize significant savings, albeit in narrow country combinations. Especially in today’s economic climate, every little bit counts!
Posted by Jeff Shieh on Wed, May 12, 2010 @ 04:16 PM
Nearly all applicants pursuing international patent protection are aware of the importance of choosing a competent foreign agent, but often do not know exactly what factors to look for when selecting one.
Some applicants simply rely on the network of agents currently retained by their domestic counsel. However, this strategy can be hit-or-miss and is often as much based on indirect benefits to the domestic law firm (e.g. reciprocity) as on what's best for the applicant.
Based on my experience, here are some of the criteria I believe applicants should look for in choosing or evaluating their foreign agents.
• Ability to communicate effectively in English. Patent law is complicated enough. No need to make things worse by speaking with someone less than proficient in English.
• Experience in a broad range of industrial fields. You certainly don't want someone with an electrical engineering background prosecuting your pharmaceutical application.
• Ability to forward communications from their local patent office to the client in a timely manner, and diarize any deadlines. Few things frustrate patent attorneys more than receiving a foreign office action, and finding that the first month out of a 4-month period for response has already lapsed.
• Expert translations of foreign documents into English. Incoherent translations require a call to the foreign agent for clarification. And then you're likely to run into the problem discussed in the first bullet point.
• Ability to receive instructions and lodge a response in accordance with those instructions. Applicants need to make sure foreign agents understand their prosecution strategy and follow it.
• Ability to advise on any idiosyncrasies of the local jurisdiction. Many U.S. practitioners are unaware of the nuances of patent law in foreign jurisdictions. A good foreign agent will modify applicant's instructions so they make sense in their local patent office.
These certainly are not the only factors one should look at when searching for an agent to represent their invention in a foreign jurisdiction. However, we've found that those agents who do satisfy all these criteria contribute immensely in minimizing any potential snags that may pop up during prosecution.
Separately, see this older post for tips to minimize costs when instructing patent attorneys.
Posted by Elizabeth Golluscio on Thu, Apr 22, 2010 @ 09:32 AM
At the AUTM 2010 Annual Meeting, several University Technology Transfer Office (TTO) executives asked us how and why TTOs are using inovia and what benefits they see. Here's a brief case study of a current university client:
Background
The TTO of this CA-based University files, on average, about 20-40 PCT applications a year. For the most part, entry into the national stage for any particular application requires a licensee in place for the claimed technology, and the licensee determines in which countries to nationalize. Payment of fees is also handled directly by the licensee.
Previously, the TTO entered the national stage and validated their granted European applications via their outside US counsel. National stage entry instructions were sent to US counsel, who would then prepare the requisite forms and instruct their foreign agents accordingly. European validation followed a similar process.
Working With inovia
An obvious concern for the TTO was how to incorporate a foreign filing provider with minimal disruption to their current practice. Here, the TTO now sends instructions regarding foreign filing and validation to us, rather than their outside counsel. We prepare all the forms necessary for national stage entry. The TTO notified their law firm that national stage entry and European validation would be handled by inovia. Once the application enters the desired countries, the TTO and their domestic counsel work together with our foreign associates through prosecution.
Regarding communication with the foreign associates, the TTO wished to receive all correspondence directly, with copies sent to their licensee and outside counsel. This way, all relevant parties were "in the loop" as far as foreign filing was concerned.
The primary benefit of this arrangement was cost savings. The elimination of an extra layer of legal fees (i.e. the cost of instructing US counsel, who would then relay instructions to the foreign associates) results in a significant reduction in costs. This TTO previously worked with a number of US law firms, each with their own network of foreign associates. In an effort to streamline their foreign filing, the TTO, by filing through inovia, was able to consolidate their foreign representatives, and reap those cost savings as well.
Given the financial pressure many Univerisities (and companies) are under this year, saving on foreign filing (without having to reduce the number of countries they enter) was a welcome arrangement.
Posted by Elizabeth Golluscio on Wed, Apr 14, 2010 @ 11:50 AM
Our survey results are in!
And it looks like belts have been tightened as far as they will go... with IP budgets now stabilizing for 2010. 72% of respondents (US companies, primarily small to medium-sized enterprises) plan to maintain or increase foreign patent filings for 2010. This is a bit of bright news after a difficult year: over 40% of respondents filed fewer patent applications in 2009 as compared to 2008, according to our survey results.
Other key findings include:
For those who did reduce foreign patenting costs in 2009, the measure most cited was to reduce the number of foreign countries entered. Specifically, the average was 6.6 countries in 2008 and 6.3 countries planned for 2010.
Of course at inovia we know foreign filing can be costly, but filing less is not the only solution! (The phrase "cutting off your nose to spite your face" comes to mind...) Run our PCT calculator for an fast and accurate estimate.
From here you can download the complete, 6-page report.
Posted by Jeff Sweetman on Wed, Feb 03, 2010 @ 04:01 PM
In theory, PCT application fees should make the PCT route to foreign patent filing more expensive (overall) than direct Paris Convention filings. However, reality isn't always that simple.
First, the additional 18 months the PCT buys allow better assessment of an invention's likely commercial value.
Second, the International Search Report (ISR) issued during this period often provides a reasonable indication of prior art that will be faced during national phase examination.
Via these advantages, the PCT enables applicants to dynamically adjust the average cost per filing in a way that direct Paris Convention filings simply don't allow. For example, PCT applications for inventions of low commercial value can be allowed to lapse, or national phase can be entered in fewer countries. Higher value applications can be filed more broadly.
Finally, if you can keep national phase entry costs low enough (get a free cost estimate via our PCT calculator), the PCT route can be cheaper overall even without taking these factors into account.
Maybe applicants should consider whether they can afford not to use the PCT!
Posted by Jeff Sweetman on Mon, Sep 21, 2009 @ 09:09 AM
Believe it or not, in some cases it can make good financial sense to let co-pending PCT applications lapse.
It must be remembered that a PCT application is actually a bundle of national applications. This means that all the advantages and disadvantages of individual countries' patent systems need to be taken into account when amending and adding claims, both during the international phase and when entering the national phase.
The Problem
A client recently approached us with 15 technologically related co-pending PCT applications. Money was temporarily tight, and they (like most applicants) wanted to maximise the coverage they could get in a number of countries. Even with the money we were able to save them per country, it was unrealistic for them to get coverage for all 15 inventions in all the countries they wanted.
Interestingly, due to a hurried filing by the client's previous attorney, the specification had an identical description, even down to the abstract and summary of invention. The only difference in each case was the claims.
It is at this point that an understanding of the different ways different countries treat the introduction of new claims (and the amendment of existing claims) comes in handy if you want to save some money right now.
The Solution
In some countries, it is possible to add new claims to an existing specification as long as the specification would have supported those claims in the first place. In such countries, it is feasible to enter the national phase with only one of the PCT applications, whilst adding the claims by way of amendment. Indeed, since amendments made at national phase entry in a particular country are essentially amendments made during the pendency of an existing patent application in that country, there is nothing special about the timing of those amendments. They can made at national phase entry (which is useful to ensure potential infringers are placed on notice), at a later date such as when requesting examination, or even left to form part of a divisional or continuation application after prosecution of the original claims is complete.
In this case, the client took specific advice from each of our agents as to the allowability of taking claims from one or more of the pending PCT applications and allowing those applications to lapse. The claims would then be added to one or more of the remaining PCT applications.
In the best of cases, this meant retaining only a single application and eventually adding all the other claimsets (either at national phase entry, or at some time in the future) during the remaining application's pendency. In the worst case, every PCT application for which protection wanted to be retained needed to enter the national phase.
See our next blog post with more details about various countries' claims issues.
Conclusion
The client was able to tailor a unique national phase filing strategy that took into account local law and practice for each country. In different countries, it took 1, 3, 6 or 15 applications to obtain protection for all the inventions, taking into account the level of support for various claims in the specification, the various combinations of inventors that existed, and the individual countries' laws. The result was far lower national phase costs at a time when funds for this client were particularly tight compared to what they are expected to be over the next year or two.
A Cautionary Comment
Of course, this article relates to a specific example, and not every set of co-pending PCT applications by a particular client will offer the ability to combine claims and reduce the number of national phase entries in this way. Indeed, where less than two or three cases are involved, the cost advantage is probably not great enough to make it worth pursuing.
It must also be said that in an ideal world (where money was no object!) it would almost always be preferable to keep all co-pending cases alive in all countries, unless there is specific, literal support in the specification for each and every claim you wish to introduce from a co-pending application. Unpredictable examiners and courts can all conspire to make those claims potentially less valid (or at least seem less valid) than if they'd been pursued via a national phase application from the original PCT application.
And finally, you obviously need to keep an eye on priorities. If the PCT applications have different priority documents, you need to ensure that there is adequate support in each application's priority document(s) for any claim you wish to add to that application.
Posted by Jeff Sweetman on Tue, Sep 15, 2009 @ 11:24 AM
As providers of services on a time basis, patent attorneys and agents should know better than most (with the exception of their clients, of course!) that time is money.
So here it is: The Completely Obvious Guide to Minimizing Costs When Instructing a Patent Attorney
1. As far as possible, send everything at once
There are few things more annoying than getting piecemeal chunks of information from a client (if there IS something worse, it's having to argue over invoices for your effort in asking for additional information).
2. When an attorney you have instructed asks you a question (or 10) or requests that you send a document, make sure you answer every point that is raised
Failing to deal with every point in a letter is time-consuming and frustrating for all concerned as additional correspondence whizzes back and forth filling in the gaps. And of course, "time-consuming = money consuming".
When replying to correspondence (especially long correspondence relating to many issues), it's a good idea to draft your reply and then read the initial correspondence carefully from start to finish. It's remarkably easy to miss a question buried in a paragraph because you jumped over it to answer a question to which you know a really good answer!
3. Take note of deadlines
I never cease to be amazed at the number of patent firms that don't get back to you when they should. Many attorneys add some form of urgency loading to discourage clients from instructing them unduly late; even if there is no explicit late charge, I suspect that more than the occasional attorney rounds up rather than down when estimating time on an urgent case.
4. Before asking a question, make sure you've read the correspondence to date
No-one minds if you ask a question for which the answer is buried twenty long letters ago - we're all human. However, if you ask something that was dealt with in the previous letter, it's tantamount to saying that you didn't read the letter - and obviously that's not going to look particularly professional.
Of course, all of these are simple ideas, but they all boil down to a little professional courtesy and respect. And of course, you might save your client a little bit of money and make the whole process just that little more enjoyable for yourself too.