Cost-Effective International Patenting Strategies

As mentioned in an earlier post, inovia and a group of 4 University panelists discussed strategies for cost-effective foreign patent filing at the AUTM Annual Meeting last week in Las Vegas.

Bringing steps in-house, negotiating with foreign counsel, and carefully weighing international patenting cost vs. the potential return were the key topics discussed in the “Cost-Effective International Patenting Strategies” panel. 

inovia founder Justin Simpson moderated the group and shared findings from our U.S. 2011 Global Patent & IP Trends Indicator.  The panelists, which included Hannah Dvorak-Carbone from California Institute of Technology, Marie Kerbeshian from Indiana University Research & Technology Corporation, Susanne Hollinger from Emory University and Bill Colburn from the University of Illinois, then shared insights into the international patenting strategies of their Technology Transfer Offices (TTOs).

The inovia Indicator found that nearly 60% of respondents are working on a reduced IP budget going into 2011, so cost cutting is a key concern.  The panelists confirmed that the mindset is no different at their TTOs.  Susanne Hollinger shared that Emory’s TTO has been able to save a lot of money by doing a lot of the “prep work” for foreign filing (reducing claims, completing paperwork) in-house.  Marie Kerbeshian shared a similar story; Indiana University has a successful internship program, which frees up their licensing managers for “what they do best”, while reducing department spend.  Conversely, Bill Colburn said Illinois does not have the staff to bring steps in-house, although they have used interns to handle some work, such as searches.

Several of the speakers have had experience with negotiating with foreign counsel in order to lower their costs.  Hannah Dvorak-Carbone said Caltech has been approached directly by foreign firms, offering them fixed/lower rates.  Then, their TTO is able to present those rates/put pressure on their outside counsel.  Susanne Hollinger challenged all attendees to either deal directly with their outside counsel/foreign agents to get lower rates or put pressure on their U.S. counsel.  “I don’t think there are a lot of people who recognize foreign filing as a ‘pass through’,” Hollinger said.  “Most likely your U.S. provider is not reviewing the cost unless you ask them to.  It’s not their money.”

Several audience members were keen to learn the panelists’ takes on where to file.  Bill Colburn said that when he started with Illinois in 2002, they had a broad, standard set of countries to file into.  “We were pretty naïve,” he commented. Susanne Hollinger explained that Emory typically files into the U.S. and Europe as a base, and then considers where else to file.  Marie Kerbeshian suggested to “take the pulse of several of your outside counsel; find out where their clients are filing.”

Finally, the panelists addressed the topic of “who pays the bills,” citing specific licensee issues.  Many of the panelists expressed a common sentiment: licensees/start-ups often do not understand the foreign filing process and may balk at the cost.  Regarding the licensee’s view of foreign filing and associated costs, Marie Kerbeshian commented, “with a start-up, you’re taking a look at a champagne list with a beer budget!”  Several panelists recommended starting the conversation with licensees regarding foreign filing strategy early.

Hannah Dvorak-Carbone shared that Caltech might consider filing a technology internationally without a licensee if it comes from an inventor or professor with a good track record.  “We have some serial entrepreneurs who we make exceptions for,” she commented.

Although the cost can be high and there can be complex licensee issues to negotiate, Susanne Hollinger made a strong case for filing internationally: Emory has received 60% of its revenue from ex-U.S. filed technologies.

We’d like to thank the panelists for participating in this informative discussion.  For more information on foreign filing strategy and how inovia works with universities, visit our resources page.


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