Posted by Elizabeth Golluscio on Wed, Dec 16, 2009 @ 01:27 PM
It's that time of year again; where did the year go?
inovia handles the 3rd largest volume of PCT applications at the national stage, according to an MIP Ranking in October '09. The countries our clients filed into for 2009 broke down by the following ranking:
1. China - 11%
2. Europe - 10%
3. Canada and Japan - 9%
5. Australia and India - 8%
7. Brazil - 6%
8. Korea - 5%
9. Mexico, South Africa, Russia and USA - 4%
The <4% countries included Singapore, New Zealand, Israel and Malaysia.
Look for a future post with a break-down by Industry type against country selection(s).
Posted by Jeff Sweetman on Wed, Dec 09, 2009 @ 01:01 PM
We hear a lot from our clients about how hard the last 12-18 months have been for them financially. Lower sales, tighter margins, delayed cashflow, and fewer opportunities for licensing and sale of IP (and at lower prices) have made the patents side of life more difficult for just about everyone.
Patent firms have faced their own related problems.
Now the falling number of filings with the USPTO, at least partly due to the recession, is having an impact on its ability to operate effectively. The USPTO's annual report for fiscal year 2009 suggests a $135m shortfall in fees, representing nearly 7% of its annual budgeted income. In his message at the start of the report, Director Kappos explains that:
"The downturn in the economy showed us that the Agency is working with an outdated financial model. Due to decreased patent filings and maintenance fee payments, the Agency found itself in a financial crisis and was forced to freeze hiring, curtail mission critical programs, and cut back in key efforts relating to the Agency's mission."
This couldn't come at a worse time, given the range of challenges from record backlogs to low morale already being faced by the organization. While initial impressions of the impact Director Kappos has had are cautiously positive, this financial situation is hardly an ideal basis from which to launch the bold strategies necessary for reducing pendency and improving examination quality.
One proposal that's generated some interest is a 15% increase in USPTO fees for one year. This is designed to give the USPTO some breathing space while the economy gets back on its feet and applicants start filing again. The Intellectual Property Owners Association, for one, backs this proposal, as long as it is limited to a year and does not result in the USPTO gaining power to set its fees.
There are some risks associated with this proposal, though. Increased fees may further impact already stretched applicants, resulting in fewer filings, which would erode the aggregate effect of higher per-case fees. A double-dip recession, if it happens, will further reduce the USPTO's income, putting it back where it started, or worse.
If nothing else, the present situation illustrates the short-sightedness of the US government skimming off fees collected in excess of operating costs during boom years. This meant the USPTO couldn't invest in its processes, people and services, nor could it build up a buffer of funds to get it through this sort of a dry patch.
Either way, Director Kappos certainly has his work cut out for him.
Posted by Jeff Sweetman on Tue, Dec 01, 2009 @ 11:16 AM
One of my PCT alerts today included a CBS News blog on green issues... Curious about why a green-issues blog would refer to the Patent Cooperation Treaty (PCT), I had a look.
I was amused to find the blogger placing the Patent Cooperation Treaty in the same category as the Convention on Psychotropic Substances - a category he refers to as "forgettable" treaties "that achieve some progress but essentially serve to remind signatory nations that they passed the same national laws".
An interesting interpretation, to say the least!
The number of applications filed via the PCT has increased every year since PCT applications were first accepted in 1978. Over 1.6 million applications have been filed since then (to 2008) and over 160,000 applications were filed last year, according to WIPO.
Excluding the recent international financial turmoil that has affected filing of all sorts of patents (local, direct foreign and PCT), the annual growth rate of filings via the PCT has averaged something like 5% per annum for the last decade.
In the absence of the PCT, what would have happened to all these applications? Some would have been filed only in the home country of the applicant. Some would have added perhaps one or two foreign countries. Some would have been filed in a larger number of foreign countries, with the applicant betting a very substantial amount of money that no prior art would surface after all the foreign filings fees, translation charges and foreign attorney fees had been spent. In all these cases, the decision on how many countries to file in must be made an average of 18 months earlier than via a PCT application.
You see, without the PCT and its 30/31 month national phase deadline, there is simply no practical way for applicants to delay (beyond the 12 month Paris Convention period) the substantial costs of foreign applications. They'd either have to limit themselves to a smaller number of applications or commit a huge amount of money very early in the commercial life of the invention to cover a large number of countries at relatively great risk.
As for the PCT "essentially [serving] to remind signatory nations that they passed the same national laws"... well, let's just say that is not my understanding of the intent or practical impact of the PCT.
And in any event, I suspect many of the countries presently protesting that WIPO is attempting to use the PCT to standardise national laws would vigorously dispute such a conclusion.
Now I'll admit intellectual property isn't that interesting a subject for most people. For some it holds an interest mainly because they disagree with some aspects of it to one extent or another. The PCT mightn't even be as interesting as the psychotropic drugs the CBS's green blogger lumped it in with. But to suggest the PCT is "forgettable" ignores what the PCT has achieved for inventors and technology businesses of all sizes over the last thirty years.