inovia's Foreign Filing Blog

The Patent Prosecution Highway: PCT Ally or Enemy?

Overshadowed by recent patent examination backlog discussions, a series of bilateral agreements, known as the Patent Prosecution Highway (PPH), has quietly been making progress on work-sharing between patent offices.

The PPH allows fast-tracking of an application in one country, based on the results of examination in another.

It's been argued by some that the PPH is undermining the development of PCT work-sharing schemes, by sidestepping political logjams at the PCT level.  

However, if the PPH is successful, much of the procedural work for implementing work-sharing under the PCT will already have been developed, tested and proven in practice.

Perhaps as importantly, the PPH should also have the more subjective - and critical - effect of increasing trust between patent offices. A lack of trust in the work of other patent offices has been a significant problem with achieving consensus in relation to reliance on work done in preparing the ISR, for example.

Overall, if the PPH is successful, it might ironically have the effect of speeding up a belief in genuine work-sharing at the PCT level. The recent agreement to start allowing PCT national phase applications to be used under the PPH takes another step towards that long-term goal.

Photo credit: rjones0856

Controlling Outside Legal Costs

At the ACC's Annual Meeting in Boston, the 2009 ACC/Serengeti Managing Outside Counsel Survey results were announced and managing outside legal costs is back in the #1 spot, over compliance concerns.

See the full announcement.

I think we can safely speak for most of our clients and say we wholeheartedly agree!

BRIC Countries - IP Concerns?

Our clients often ask us about the value of IP protection in countries like China or India (or Russia and Brazil, the other "BRIC" countries), due to a perception that IP laws are relatively weak there.

While we don't give advice about country selection, consider this approach: look how far China has come in IP law and enforcement terms in the last 10 years.  Now try to imagine where it might be in another 10 (at which time a patent entering the national phase now will still have 8-10 years to run).

Then, look at the growth of the retail market in China over the last 10 years within the technical field covered by the invention and try assessing where that might be in another 10 years.

Looking at the drastic positive changes in both market size and the effectiveness of IP law, the long-term picture for some technologies can make countries like Brazil, China, India and Russia (and more recent arrivals to the BRIC-type club, such as Korea) essential foreign-filing destinations.

We'll continue to blog about this topic in the coming months, as (based on the amount of feedback we get) it's an issue of interest to applicants of all sizes and levels of experience.

Photo credit: Esparta

If you want a quick and free cost estimate of filing into a BRIC country (or any of the 60+ other countries where we operate), use our cost calculator for your PCT national stage entry or European validation.

Part III of III: Where to enter national phase?

Part III: Where to enter national phase?

 

"If you build it..."

We're sometimes surprised by how often applicants say they're filing in a particular country simply because that's where they intend to manufacture the product. If money is no object, there's nothing wrong with this approach. However, unless there is something special about that country's manufacturing sector that makes it likely a competitor would need to get a particular product manufactured there, applicants should consider whether this money might be better spent protecting markets where the product will actually be sold. A competitor choosing to manufacture in Korea rather than China is a trivially easy way to avoid a Chinese patent, for example.

The Snowflake Principle

No two inventions are the same, and different patent applications may have different importance to your business. It may not make sense to your business to always proceed in the same combination of countries with all applications. Perhaps your budget would better be spent by getting wide coverage for important inventions, and lesser coverage for inventions that are less central to your business.

Photo credit: CaptPiper

Part II of III: Where to enter national phase?

Part II: Where to enter national phase?

 

Competition

Where are the applicant's competitors operating? Particularly in high-tech and fast-moving fields, markets are far from established, and you may not yet be competing directly with your competitors in some markets. Don't wait until you're both there slugging it out to consider extending patent protection into that jurisdiction.

Also, it may pay you to consider covering at least some of your competitor's more important markets to give yourself some leverage. For example, one of our clients' major competitors is based in Austria, and has a particularly strong market presence in that country. They consider Austria a special case because of this. For less important inventions that might not be worth the cost of a European application, they file in Austria anyway to give them extra leverage in this market where their competitor is particularly strong. It's a nice ace to have up your sleeve if you one day find yourself negotiating a cross-licence with that competitor!

Think about the countries where your competitors are (and are operating) and determine whether there is long-term advantage in giving yourself some leverage there, even if you aren't considering taking them on there yet.

Part I of III: Where to enter national phase?

You know the story: about 18 months ago you filed a PCT application designating over 130 countries and regions. Now national phase deadlines are fast approaching and you or your client needs to make a decision about which countries and regions should be kept alive by entering the national/regional phase.

Going into all countries would be nice, but even Bill Gates couldn't afford to do that, so which ones should you choose?

We are constantly surprised that, even by this stage, many applicants haven't given much thought about what they are hoping to achieve with their patent application. We're even more surprised that applicants ask advice about this from someone (ie, us!) who doesn't know their business, their technology or their market.

While we can't give them specific advice, we can point out a few factors they might like to think about when making a decision.

"To Market, to Market..."

It seems obvious, but the first question an applicant should ask is "Where are my main markets?" For consumer goods, applicants might want to consider covering their local country (if they don't already have an application on foot there), and then any other jurisdictions where they already make sales. For general consumer goods, the US is usually a good addition - for many products a US patent gives good bang for the bucks spent.

Applicants that manufacture and sell, say, mining equipment should be looking at where that equipment will be used; if there's no iron-ore mining going on in the US at the moment, there's little use in getting patent protection for an iron-ore testing rig there, even if it is the world's largest (general) consumer market.

In short, applicants should look at where their products will sell, not where products in general sell.

Also, more emphasis should be placed on those markets with the potential for growth - and bearing in mind that patents last 20 years from filing in most countries, potential for growth should be considered from a long term perspective, not just what might happen in the next financial year or two.

More thoughts in a subsequent post...