Quality is a Top Priority!

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Resource Manager, Janine Dunn, discusses the team’s dedication to quality management systems

Having worked at RWS Alnwick for 18 years, I have witnessed firsthand how we have developed a team that prioritises providing excellent quality of service. Consequently, I’m delighted to share the news that we have, once again, met the highest industry standard for quality and retained our ISO9001 accreditation.

This is a certified quality management system (QMS) which allows us to show our ability to consistently provide products and services that meet the needs of their customers.

Every three years our accreditation is reassessed and we are measured on five key areas of the business: facilities, people, training, services and equipment.  I am a member of the internal audit team and we are ever vigilant to ensure that all quality procedures are aligned with these five areas, not just in the run up to the audit but as a matter of routine.

For example, we use our monthly internal meetings to report on how our procedures are running and to relay important customer feedback to the team. It’s a great opportunity to make staff aware of positive comments and also to discuss different ways we can do things.

The period leading up to the assessment necessitates additional work but it’s definitely worth it as the long-term benefit is that we increase customer satisfaction levels and improve productivity. We also believe the fact that we actively look to achieve ISO9001 without contractual obligation, underlines our commitment to quality.

By maintaining and following the ISO accreditation we are developing a system that works effectively for us so that we can come together as a team and share best practices.

A big well done to all involved in ensuring that our accreditation has been reissued!

Tips for Protecting Your IP in China

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As a major market and manufacturing center, China has emerged as one of the top filing destinations for inovia‘s clients. Although IP laws in China have improved in recent years, enforcement of IP rights remains a constant concern for applicants filing (or considering to file) into China.

A May Bloomberg Businessweek article outlined some helpful tips for protecting your IP in China. Here’s a quick recap:

  • Curb the motivation for theft
  • Reduce your competitors’ ability to steal your IP; and
  • Minimize the residual damage

The article further discusses specific examples of how to execute each point.

Obviously, there is much room for improvement in China’s intellectual property laws, but the steps they have taken already and the international pressure being exerted on them to change are encouraging signs. After all, a patent lasts for 20 years, so your filing strategy for China should not be to look at its present state, but its future.

Are you filing into China? If so, what steps do you take to protect your IP there?

If you’re considering filing into China, you can get a free quote for PCT national stage entry when you register for the inovia portal.

 

Managing IP’s China Trends Survey

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Similar to our US IP Trends Survey, Managing Intellectual Property magazine conducted a survey on the state of the IP industry in China. 

Respondents representing in-house counsel for 80 China-based companies answered questions pertaining to their company’s domestic and international IP strategy.  Managing Intellectual Property presented their findings in a November 1, 2010 article, but I’ll highlight the points I found most interesting:

  • We have previously reported on China-based companies, such as Huawei and ZTE, which consistently lead the world in PCT filings per year.  However, such prolific filers are certainly the exception and not the rule in China.  Nearly half of all respondents indicated that they have fewer than 100 registered patents, including utility model patents, while only about 13% have over 1000 registered patents.
  • For the most part, IP departments in Chinese corporations are still developing and relatively small.  In fact, 89% of respondents indicated that they have patent departments comprising 10 or fewer individuals.
  • Government-sponsored subsidies and tax breaks provide companies with a significant incentive to file patents domestically.  78% of respondents indicated that they received some form of subsidy for their patent filings.  Furthermore, nearly 1/3 of respondents indicated that they have zero patents registered in foreign jurisdictions.  For many outside observers, this disparity brings into question the quality of patents filed with the Chinese Patent Office. 

These are merely a few of the highlights of the Managing Intellectual Property survey.  For complete survey results, please read the full article here (subscription required). 

Patent Quantity over Quality in the SIPO?

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Thomson Reuters recently released a study entitled “Patented in China II: The Present and Future State of Innovation in China”, which predicts that China is poised to become a global patent power in terms of volume in the near future. 

According to the Thomson report, patent filings in China are on pace to surpass those in Japan and the United States by 2011.  Looking at the period between 2003 and 2009, China’s patent volume witnessed an annual growth rate of 26.1%, compared to 5.5% for the U.S.  Part of this growth can be attributed to China’s transition from an agriculture-centralized economy to one focused more on technology and innovation.  In recent years, domestic applications outnumbered applications from foreign entities by over 2 to 1, and that trend looks to continue into the future.

However, this incredible growth must be taken with a grain of salt.  The Chinese government and domestic corporations offer many incentives to local applicants, leading many to question the quality of the applications being filed there. The Economist recently published an article commenting on China’s patent filing incentives and its effects in the State Intellectual Property Office of the People’s Republic of China (SIPO).  Rewards, such as university tenure, cash bonuses for applicants and corporate income tax cuts, certainly encourage the filing of applications regardless of an invention’s underlying quality or value. 

Furthermore, SIPO also accepts utility-model applications, which need only meet certain formal requirements and confer 10 years of protection instead of the typical 20 years.  Utility-model filings in China have skyrocketed in recent years and their numbers now equal that of normal patent applications.       

So although the number of China patent applications filed appears very impressive on its face, there is much skepticism as to whether the corresponding inventions would be patentable in other jurisdictions.

However, one should not discount China as a patent destination.  Many applicants recognize that China has taken steps to improve their IP laws and enforcement.  That, along with China’s vast market potential, creates a jurisdiction that cannot be ignored by foreign interests.  Just last year, inovia filed more PCT applications into China on behalf of our clients than any other country. 

If you would like more information about filing in China, feel free to contact us at mail@inovia.com or get a free, one-click foreign filing quote from our client portal.

USPTO Announces Launch of Second Peer to Patent Pilot Program

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On October 19, 2010, the USPTO, in collaboration with the New York Law School’s Center for Patent Innovations, announced the upcoming launch of a second Peer to Patent pilot program.  Scheduled to commence next Monday, October 25, 2010, the Peer to Patent program expands upon the previous program. 

The original Peer to Patent program, which began in June 2007, introduced public participation to the patent examination process.  Inventors could opt to post their application on the website www.peertopatent.org, whereupon volunteer technical and scientific experts could comment or submit relevant prior art.  Following the review period, the prior art is then sent to the USPTO for consideration during prosecution. 

The second Peer to Patent program expands upon the eligible subject matter of the earlier program, which was limited to software and business methods.  For the second Peer to Pilot program, eligible subject matter now includes biotechnology, bioinformatics, telecommunications and speech recognition.    

The Peer to Patent program seeks to reduce examination time and increase patent quality.  However, the success of this program is greatly limited by the low number of applications volunteered for review (only 189 applications were reviewed in the first pilot program from 2007-2009).  Whether expansion of the subject matter eligible for the Peer to Patent program increases its effectiveness remains to be seen.  But unless participation in the Peer to Patent program increases exponentially, it’s unlikely that this program will make any significant steps towards achieving its goals. 

Patent Translations

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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.  

One Translation – Multiple Countries

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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!

What to Look for in a Foreign Agent

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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.

Translation quality for foreign filing

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While we presently accept externally-prepared translations in principle, we sometimes find that translations we receive from clients are not of high quality.

Additional costs are then incurred in having our agents “fix” the translation.  Worse (if it’s not bad enough), the client may end up paying the full cost again to have it translated from scratch – not ideal if they’ve already paid for the first one!

You should be able to say the following about a patent translation:

  1. It is a true and accurate translation of the source document.

  2. The translator is a native speaker of the destination language.

  3. The translator is technically skilled in the relevant technology.

  4. It takes into account any specialist legal language used by patent attorneys in the destination country, including idiomatic translation of special technical or legal words used in the source document. 

  5. It satisfies local formal requirements relating to character set, font size, spacing, margins and so on.

In our experience, translations prepared by anyone other than a specialist patent translator run the risk of significant deficiencies in some or all of the above areas.

For example, it is rare that even a person very skilled in the relevant technical field who writes well in the destination language and has a good understanding of the source language will have any knowledge of the legal language issues, or of the formalities.

The service level agreements we have with our agents require them to satisfy all the above criteria. We also require that the translation either be prepared by a patent attorney or comprehensively reviewed by a patent attorney prior to filing.

In virtually all countries, it is the translation that forms the basis for your rights. Any weakness or deficiency in the translation is a weakness or deficiency in the resultant protection – and worse, it’s one you won’t know about until it’s too late.

If you have thoughts about translations (and particularly the importance of quality), we’d love to hear them.