Managing Intellectual Property magazine recently published the results of its 2014 « Patent Survey », which ranks the top firms for prosecution and contentious work in more than 70 countries. As a testament to the quality of our agent network, inovia’s agents in 39 countries were listed in the ranking (many for consecutive years), with agents in 18 countries achieving the highest possible « tier 1 » rank.
« We want to congratulate all of the inovia agents who ranked so highly in this year’s Managing IP survey », commented our founder, Justin Simpson. « One of the main reasons inovia has become the leader in this field in the last 12 years has been the quality of its agents. When clients trust inovia with their foreign filings, they are also trusting the foreign patent firms we’ve selected. We are still seeing the majority of our clients take advantage of the cost savings by using an inovia agent for their foreign filing needs. »
In late September, Managing Intellectual Property magazine posted the results of their 2013 PCT Survey, which ranks the top Patent Cooperation Treaty (PCT) firms by their number of applications coming due for national stage entry in 2013. I’m proud to say that inovia has placed first in the United States for the third consecutive year, handling the national stage entry of more than 1,500 PCTs in 2013. We also placed second in the global rankings behind our Chinese agent China-Pat Intellectual Property Office, who will handle 1,772 applications this year.
We take great pride in the quality and capabilities of our agent network, and would like to congratulate our associates who ranked among the top filers in their local markets:
- China-Pat Intellectual Property Office of China (#1)
- Nederlandsch Octrooibureau of the Netherlands (#2)
- Meissner Bolte & Partner of Germany (#2)
- AFD China Intellectual Property Law Office of China (#3)
- Sunyoung International Patent & Law Firm of Korea (#3)
- Ridout & Maybee of Canada (#3)
- S. Majumdar & Co. of India (#3)
- Bereskin & Parr of Canada (#4)
- Borden Ladner Gervais of Canada (#5)
- Harness Dickey of the United States (#8)
- Hanol Intellectual Property & Law of Korea (#9)
- Shelston IP of Australia (#9)
- Freehills Patent Attorneys of Australia (#10)
- Kilburn & Strode of the United Kingdom (#10)
As part of this year’s PCT Survey, Managing IP‘s Peter Leung spoke with inovia CEO David Nelson and other industry experts to examine the impact that « IP Portals » are having on the industry. The article references IP consultant Duncan Hart (watch the webinar we hosted with Duncan back in January on demand), who has written about how IP portals disrupt the relationships that patent attorneys have with their clients. On the contrary, Nelson and representatives from other IP portals point out the growing trend of IP firms turning to IP service providers in order to make their own practices more efficient. You can read the full article from Managing IP here - we’d love to hear your opinions on this topic in the comments section below.
The 1,500+ PCTs that inovia will handle in 2013 reflects a 10% increase from last year and is more than double the number of filings handled in 2011. If you’d like to learn more about how inovia can fit into your foreign filing practices, please feel free to get in touch with the inovia office nearest you.
Managing Intellectual Property magazine recently published the results of its 2013 “Patent Survey,” which ranks the top firms for prosecution and contentious work in more than 80 countries. As a testament to the quality of our agent network, inovia’s agents in 46 countries were listed in the rankings (many for consecutive years), with agents in 19 countries achieving the highest possible “tier 1” rank.
After a long gestation period, the London Agreement finally entered into force back on May 1, 2008. Its aim was to reduce the cost and complexity of validating European patents in individual countries following grant by the European Patent Office (EPO).
Many London Agreement countries reduced or completely removed the need for translation of any portion of the specification (bearing in mind that the granted claims are required in the official EPO languages of English, France and German as part of the grant procedure). Probably of greatest interest to most applicants, the need for full specification translations in France, Germany and the UK was removed entirely. A number of other London Agreement countries require only the claims to be translated into the local language, although sometimes this is only if the specification is in English.
In fact, the need for formal validation has also been removed in countries such as France, the UK and Germany. To have a European patent extend to countries like this, you just need to pay the renewal fee each year. You must also maintain an address for service within a European Patent Convention member state.
While not strictly necessary, it is still usual to continue to record an address for service in such countries individually, rather than relying on a central address elsewhere in Europe. There are a few reasons for that:
1. Language/procedure headaches
This is probably the main issue. While, say, the French patent office may be willing to mail notices to European addresses outside France, they’re not compelled to communicate in the language of the destination country. Since all correspondence is typically in the local language of the relevant patent office, it makes sense to allow a firm located in the country, with native speakers and familiarity with local laws and practice, to handle incoming correspondence from their patent office.
2. European Patent Attorneys
Strictly speaking, an applicant’s European patent attorney could record themselves as address for service in such countries. However, many European patent firms don’t offer this service. Language difficulties and procedural risks (as discussed in the preceding paragraph) are the major reasons for this. In addition, a surprising number of European patent attorneys are not as familiar with precisely what’s involved, or even that they are able to offer this service.
And those that offer this as a service will usually charge you for it.
3. Delays and risk associated with mail
When your patent renewal fee isn’t paid due to an unforeseen problem, do you want the notice advising you of the missed payment to be put in the mail destined for another country, or would you prefer it to be sent locally? What if a competitor files for a declaration of invalidity of your patent? Is that the sort of thing you want delayed or lost in the mail? While there are no statistics on the impact lost or delayed mail has on patentees, for the modest cost involved, recording a local address for service seems like good insurance. That way, your local foreign associate can notify you of any issues immediately.
So while, thanks to the London Agreement, there are several EPO countries that no longer require formal validation of a granted European patent, there are several reasons why you may want a local address for service in each country.
Research your options for validation. US firms and their clients often overpay for validation, due to the fact that their instructions generally pass through several layers of attorneys. inovia offers a cost-effective way to validate a granted European patent in up to 38 countries with a single instruction. Our online portal offers a free 1-click quote tool which allows you to create instant validation estimates for your specific European patent.
If you’re interested in learning more about London vs. Non-London Agreement countries, you can also download our European validation e-kit or send us an email.
This week we’re celebrating inovia’s 10th birthday! In April 2002, our founder Justin Simpson launched the company with his father Marcel by his side to celebrate. In the beginning, we were known as PCTFILER (later changing to inovia in 2008) and initially offered 7 countries in our foreign filing network.
We’ve grown significantly in the last 10 years and a lot has changed. Just to mention a few things:
- Our agent network has grown to cover over 80 countries.
- The www.inovia.com website has a very different look and feel.
- Our foreign filing platform, inovia.com, now offers instant quotes for PCT national stage entry and European validation as well as agent selection choice.
- We’ve grown from two employees to over 30, with offices in New York, London, Munich, Sydney and Tokyo.
Over the last 10 years, we’ve also seen a shift in the industry’s perception of foreign filing outsourcing. Justin had his work cut out for him when he first started the company. It was difficult to convince attorneys and companies that foreign filing work should be turned over to a specialist provider, since the concept was completely new. The story was the same when annuities providers were first starting out – and now outsourcing is commonplace there.
However, Justin got early buy in from forward-thinking investors, agents and clients who shared his vision for a simple, cost-effective and high quality solution to foreign filing. Today, we’re proud to say that we’ve worked with over 1,000 attorneys, companies and universities to streamline their PCT national stage entry, European validation and patent translation work.
It seems that things are changing across the board in the legal industry, too. A recent About.com article listed legal process outsourcing, alternative legal service delivery models, and alternative billing models among the “10 trends reshaping the legal industry.” The idea behind these trends, as well as our work, is to make law firms and corporate IP departments more efficient. By leaving administrative work to specialist providers, our clients can focus on their substantive (and more lucrative) work.
I spoke with Justin last week about why he founded inovia and his take on the last 10 years. Here’s a little bit from our conversation:
What inspired you to build the inovia platform?
I was working as a software-specialist patent attorney in the late 90’s and saw first-hand my clients’ struggles to afford foreign patent protection. When I looked into the work involved I could see that a lot of the costs happened at the initial filing stage when it was really just a process of filling in forms and paying fees around the world. I used my computer science background to design and patent some computer systems that automate the process and hence inovia was born.
What makes inovia stand out among its competitors?
Two things really – our technology and our great agent network. Because we’ve focused 10 years of IT development on automating the foreign filing process, I can honestly say that our technology for quoting on and filing patents is the best in the world. Our competitors either have no technology (doing everything by hand with paralegals) or they’ve attempted to copy our technology, but really haven’t done a great job. Secondly we’re backed by a network of top agents in 80 countries. Our competitors sometimes hide who their agents are, but we’re proud of ours. Most of them rank highly in the annual surveys by leading IP magazines, and the rest have been thoroughly vetted to ensure that their quality and client service match inovia’s high standards.
What one thing do you want the world to know about inovia, that they may not already know?
I think often patent firms see inovia as a competitor. But half of our clients are patent firms. Our technology simply provides a tool for patent firms to do foreign filing more efficiently, freeing up their billable hours for more substantive and strategic work. inovia is very very good at filling in forms. It doesn’t sound sexy, but that’s the heart of what we do. So attorney firms should take the time to explore whether they can make use of our tools and turn us from a (perceived) competitor into a partner.
What does the next 10 years hold for inovia?
I think we’re at a tipping point in the foreign patent filing space. When patent annuities started to be outsourced in the early 1970’s there was a slow growth. Then suddenly everyone realized that outsourced companies were best placed to handle annuities and a land-grab ensued around the world. I believe we’re at that point now. So although we handle the national phase of more PCTs than any law firm in the US, there’s a lot more room to grow. With 10 years’ experience and the best technology in the world, we’re well-placed to lead that change.
And we’ve got a range of new products we’ll be launching in the next 12 to 18 months that will expand our reach beyond PCT nationalization and European validation. But I can’t tell you too much, as it’s our little secret.
I also wrote to several of our clients to ask them about their feelings on inovia and the impact our service has made in their day-to-day work.
Jayshree Gerken, an attorney at JAG_IP_LAW, shared, « I provide strategic IP counseling to my clients, and I always recommend that they use inovia for their National Stage filings. I have appreciated the professional and friendly services of several folks at inovia! »
Eva Pahus and Paul Hilton from FOSS ANALYTICAL A/S, wrote, “Using inovia has certainly helped us in streamlining our PCT national phase entry procedure and has led to significant cost savings. We find the ‘one-click-quote’ quite useful for preparing and budgeting the entries. Finally, it’s most efficient that we only have to instruct multiple filings in only one instruction.”
Benita Rohm, Patent Attorney at ROHM & MONSANTO PLC, shared, « “Being from a small practice, one of the things that I find most beneficial in my relationship with inovia is having a trusted partner to take some of the administrative work required for filing off of my plate. It’s also really nice to have one stop shopping. Since I often get last minute instructions from clients, it’s much easier to issue one instruction and pay one fee for filing into multiple countries versus six.”
We’re certainly happy to hear that we’re making our clients’ jobs easier – after all, that’s why we were founded. You can read more client testimonials in our 10th anniversary press release.
I’ll leave you with a bit of inovia trivia: the patent filed for the technology serving the basis of our foreign filing platform (“System and method of attracting and lodging PCT national phase applications”) was recognized by WIPO in 2003 as a PCT Notable Invention.
Here’s to the innovations to come in our next 10 years… cheers, inovia!
Last week we announced that several of our foreign associates were ranked among the top patent firms by Managing IP. This week we’re happy to share that another one of our foreign associates, Brooks Kushman (U.S.), has been recognized. Brooks Kushman recently ranked among Law360‘s largest intellectual property practices in the world. The firm is the only Detroit-based law firm recognized on the list. You can read the full press release here.
Brooks Kushman adds this to other recent accolades: ten of its attorneys were recently named to INTA committees, firm president Mark Cantor and shareholder Frank Angileri were named to the 2011 Best Lawyers in America list in the IP category, and five of their attorneys appeared on the 2011 Michigan Super Lawyers listing.
Congratulations to Brooks Kushman and our other foreign associates recognized for accolades this year! For more information on Brooks Kushman and to access all of our agents’ biographies, visit our agents page.
People often ask us how we go about selecting the agents in our network, which has grown to cover 84 countries across the globe. We are very transparent about who we work with and are also happy to share the criteria that we use for their selection. In our experience, we’ve found that to provide the highest quality standards our agents need to have: 1) a diverse array of specialties, 2) meticulous translation standards, 3) expertise in their jurisdiction, and 4) a commitment to client service. Many of our agents have been with us since our inception nearly 10 years ago and share in our forward-thinking culture.
This is why we’re pleased to announce that so many of them have once again ranked in Managing IP’s “Patent Survey 2012,” which ranks the top firms for prosecution and contentious work in more than 70 jurisdictions.
Our agents covering 42 countries are listed in the ranking for patent prosecution work, meaning that they have been recognized by their peers and clients for the quality and depth of their practice. inovia agents in 13 countries achieved the highest possible (tier 1) ranking.
With that, we would like to congratulate our agents who have been recognized in this survey, most for a consecutive time:
Arnason Faktor (Iceland)
Dr. K Chrysostomides & Co. (Cyprus)
Foral Patent (Latvia)
Herrero & Asociados (Spain)
Kilburn & Strode (United Kingdom)
Protector Intellectual Property Consultants AS (Norway)
Reinhold Cohn & Partners (Israel)
S.B.G. & K. Patent and Law Offices (Hungary)
Sonn & Partner (Austria)
Spoor & Fisher (South Africa)
Advanz Fidelis (Malaysia)
Borden Ladner Gervais (Canada)
Cruickshank Intellectual Property Attorneys (Ireland)
Law Firm of E.B. Astudillo & Associates (Philippines)
Shelston IP (Australia)
Sulima, Grabowska, & Sierzputowska (Poland)
Vision & Associates (Vietnam)
Všetečka Zelený Švorčík Kalenský and Partners (Czech Republic)
Eitan, Mehulal & Sadot (Israel)
George Widjojo & Partners (Indonesia)
Kan & Krishme (India)
MALAMIS & Associates Ltd. (Greece)
One Legal LLC (Singapore)
Meissner Bolte (Germany)
Avah Legal S.C. (Mexico)
David do Nascimento Advogados Associados S/C (Brazil)
Patent Agency Kaosaar & Co. (Estonia)
Patrade A/S (Denmark)
For a full listing of the results of the Patent Survey 2012, visit Managing IP’s website. You can also access a full listing of our agent network and their bios here.
Managing IP magazine recently published its 2011 PCT survey, which ranks firms according to the number of PCT applications they filed due for national stage entry in 2011. We’re proud to announce that inovia (the only non-law firm in the global rankings) has moved up one spot from its 2010 fourth place position, underscoring the growing demand for technology solutions that reduce the cost and complexity of foreign patent filing.
We’d also like to congratulate our foreign associates who ranked highly in their jurisdictions, many for the second consecutive year: Shelston IP in Australia, Borden Ladner Gervais in Canada, AFD China Intellectual Property Law Office in China, Reinhold Cohn & Partners in Israel, SunYoung International Patent & Law Firm in Korea, and Kilburn & Strode in the UK.
inovia works with MIP to help compile and verify this data, based on WIPO’s public records.
Click here to read the full article on MIP’s website (subscription or free trial required).
Last week, I had the pleasure of attending and speaking at the National Association of Patent Practitioners (NAPP) Annual Meeting. Presenters included directors from WIPO, law professors, and attorneys from the US and abroad, speaking on a diverse range of topics.
I was asked to speak on a subject near and dear to my heart: Outsourcing Foreign Filing. Below are some of the highlights of my presentation:
- Legal outsourcing is on the rise, especially in the area of foreign filing.
- Law firms are transitioning from a « one-stop shop » model to one where services are « unbundled ».
- Clients are taking control of their legal services and fees.
I also discussed:
- The logistics of working with an outside foreign filing provider
- Common questions regarding foreign filing
- Filing trends and current events in the IP space
Slides from my presentation (and those of all the other presenters) can be downloaded here. If you are not currently a member, I highly recommend checking out NAPP. Their annual conference is always well organized and packed with interesting topics and people.
And make sure to watch our 3-minute overview video to learn how inovia is working with clients to reduce the cost and administration of foreign filing.
Managing IP Magazine announced last week their ranking of firms according to the number of PCT applications they filed due for national stage entry in 2010. The 14 biggest markets were included in the article.
Congratulations to our foreign agents that ranked highly in their markets: SunYoung International Patent & Law Firm in Korea, Reinhold Cohn & Partners in Israel, AFD in China, Borden Ladner Gervais in Canada, Kilburn & Strode in the UK and others.
The online ranking is here for MIP subscribers, or if you want to sign up for a free trial of the publication.
inovia works with MIP to help compile and verify this data, based on WIPO’s public records.
Of course we’re happy to find ourselves in the 4th spot worldwide this year, and in 2nd place in the US market. inovia is the only non-law firm in the global rankings.
It’s a few weeks before the 30 month deadline for national stage entry of one of your client’s PCT applications. The client calls you and tells you one (or more) of the following:
- The sole inventor has just assigned her rights to a company
- The corporate applicant’s address changed a couple of months ago
- One of the inventors currently recorded against the PCT application was listed by mistake and needs to be deleted
- The wrong serial number is recorded for the priority document (it was correct on the Request)
- The inventors are listed as co-applicants with the corporate assignee for all countries, when they should only be applicants for the USA
Is it worth recording any of these changes at this late stage?
It’s rare I’m asked a question in the patent field that I feel so comfortable answering with a one word answer: YES!
In many countries, if this sort of information is updated during the international stage of the PCT, you won’t need to do or submit anything else during the national stage to complete the correction. That means you’ll save yourself (or your client) the cost and effort of recording changes in individual countries and regions. These costs can be substantial if there are lots of countries involved.
Also, in some countries, making these sorts of changes is considerably more difficult than making them during the international phase.
WHAT PROOF IS NEEDED?
To make the change during the international phase, you don’t need to supply documentation or any other type of evidence. In contrast, many countries will at least want to see copies – and maybe certified copies – of documents supporting these types of changes if you try to make them after national phase entry.
Even in countries where evidence needs to be provided at or after national stage entry to support changes made during the international phase, having recorded the change beforehand will nearly always reduce the costs to some extent.
WHO TO CONTACT
Applicants and their authorised representatives can certainly make changes like these via their local receiving office (i.e., the patent office with which the PCT application was originally filed). However, to speed things up and reduce the chance of transmission delays or errors, in my opinion you’re better going straight to the source and correcting the information directly with WIPO.
You can find the contact details of the team handling a particular application by searching on the PCT application number at the following page: http://www.wipo.int/pctdb/en/iateamlookup.jsp
You have until the 30 month deadline to ask WIPO to make changes to PCT bibliographic information. Even if WIPO doesn’t have time to send confirmation of the change to the applicant or their attorney until after the 30 month deadline has passed, the new data will still filter through to the relevant patent offices after national stage entry.
ANY OTHER TIPS?
When instructing foreign associates to enter the national stage, be sure to give them a clear picture of any changes that were made during the international stage of the PCT procedure.
If the form from WIPO confirming that the change has been recorded (Form PCT/IB/306) has been received, provide a copy to the associate with your instructions.
Alternatively, if the change has been requested but not yet formally recorded by WIPO, it’s important you explain this to the associate with your instructions to minimise confusion.
If you need help on this topic, you can contact WIPO directly or the PCT help desk at your local patent office for more information.
Alternatively, feel free to call us or drop us an email and we’d be happy to help you in any way we can.