AUTM 2012: Cost-Effective International Patenting Strategies

inovia and a group of four panelists discussed strategies for cost-effective foreign patent filing at the AUTM 2012 Annual Meeting last week in Anaheim, CA.

IP portfolio strategy, cost-effective foreign filing, Patent Prosecution Highway (PPH) programs, and effective use of the Patent Cooperation Treaty (PCT) were the key topics of discussion in the “Cost-Effective International Patenting Strategies” session (March 16, 11am-12:30pm).

inovia founder Justin Simpson moderated the panel and provided an overview to foreign patent filing, specifically PCT vs. Paris Convention filing, the PCT process, and the European validation process. Simpson also provided a rough guide to estimating international patenting costs, which can get quite expensive. He referenced paid and subscription-based cost calculation tools, as well as the inovia 1-click quote tool.

The panelists, which included Matthew Bryan from the World Intellectual Property Organization (WIPO), Derek Eberhart from the University of Georgia Research Foundation, Susanne Hollinger from Emory University, and Alan Kasper from Sughrue Mion, then shared insights into international patenting strategy.

The university panelists started the program with a discussion on IP portfolio strategy. Susanne Hollinger shared that more than half of Emory’s royalty money comes from technologies that have been filed internationally, establishing that it’s important for their Tech Transfer Office (TTO) to consider international patent filing with or without a licensee. She stressed the importance of treating every case uniquely and warned against blanket rules such as “we only file if we have a licensee.” In order to evaluate cases, she provided the following set of questions to consider:

  1. Does it make sense? Is the case even protectable internationally?
  2. Do you need it? Understand how foreign filing will affect a deal.
  3. Can you afford it? You often have to make the decision with your own money in mind.
  4. Where to do it? Where is the market today and in five years?

She also encouraged TTOs to get licensee feedback when making international patenting decisions.

Derek Eberhart echoed these tips and encouraged TTOs to leverage their network in the decision-making process. Reach out to consultants to get market information, contact other TTOs, and get feedback from licensees. Eberhart also suggested leveraging your alumni network for IP or marketing help and gave an example of a University of Georgia alumnus who is now a foreign associate that the University of Georgia can call on. His final recommendation was that TTOs take ownership of the foreign filing process, as opposed to just leaving that up to their U.S. counsel, who may not have cost-saving interests at heart.

Next, Alan Kasper discussed PPH strategies for universities. He had 24 slides to get through and amazingly was able to share a wealth of information (and get all the way through his slides) in just 10 minutes! Kasper gave a brief introduction to the PPH and the current PPH network and then shared some positive results of the program, such as that USPTO allowance rates in PCT-PPH cases are at 91% (vs. 49% for all cases). He also shared that the cost savings can be upwards of $13,000 per case. You can read more about the PPH on our blog.

Finally, Matthew Bryan, who is the Director of the PCT Legal Division at WIPO, discussed how TTOs and other applicants can use the PCT to their advantage. He started by asking who in the room has used or uses the PCT for international patent filing (vs. direct filing) and nearly every hand in the room raised. According to Bryan, it was a very different case in the 1990’s, when WIPO had to encourage applicants to try the PCT. Bryan advised the audience to make informed choices when filing a PCT application; for example, he mentioned that using the Russian Patent Office as a search authority is a very sensible option cost-wise. He also made two important announcements: 1) As of January 1, 2012, applicants can now indicate in the PCT application if the invention is available for license, which is an option that TTOs should make use of; 2) New countries, namely Brunei and Saudi Arabia, are in the works for the PCT, so we look forward to hearing more about that.

We’d like to thank the panelists for participating in this discussion. For more information on foreign filing strategy, visit our resources page. You can also follow us on Twitter @inoviaIP for industry news, webinars, and upcoming inovia events!


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