WIPO posted a presentation from Procter & Gamble (P&G) discussing their international patent strategies and use of the PCT filing process. The presentation provides an inside look at the motivations behind a large corporation’s decision to utilize the PCT.
P&G has filed about 11,000 applications through the PCT since December of 1990. They cite three main factors for filing through the PCT:
1. controlling costs,
2. maximizing flexibility and efficiency, and
3. improving portfolio management.
The outline below highlights some of the advantages of each factor that help shape P&G’s patent strategy.
- The PCT allows them at least 18 months to defer costs of national stage entry, at which point they can evaluate the invention and change its priority tier or abandon.
- The 18-month period also allows them to collect legal, technical and commercial information.
- The International Search Report and International Search Authority/Written Opinion provides valuable information on what to expect during prosecution.
Maximizing Flexibility and Efficiency
- P&G is able to electronically file a single PCT application.
- The PCT preserves P&G’s option to enter into all PCT member states, which is valuable since it is not uncommon for the list of countries where they are seeking protection to change.
- Using Chapter II examination, P&G is able to submit amendments to the application, as well as address or eliminate issues regarding novelty, inventive step and industrial applicability.
Improving Portfolio Management
- P&G is able to make the right strategic decisions at the right time with maximum information regarding the invention.
- P&G is able to review the status of the application at various stages throughout the PCT timeline.
What’s interesting is that these specific reasons are echoed by nearly all applicants who choose to file via the PCT, from the sole inventor to international, multibillion-dollar corporations. Given the economic downturn in the last year and a half, it’s not surprising that applicants are looking to control their IP costs without sacrificing portfolio control and efficiency. In fact, 79% of respondents to our 2010 US IP Trends survey indicated they intended to file via the PCT this year.