Foreign Filing and Prosecution Tips from IP Execs at CA Conference

Last week, inovia and a group of four IP executives discussed strategies for foreign filing and prosecution at the IP Counsel Café in Palo Alto, CA.

Where to file, tips for reducing cost and administration, and strategies for ensuring problem-free prosecution were the key topics discussed in the “Foreign Filing and Prosecution” panel.

inovia founder and Patent Attorney Justin Simpson moderated the session and shared findings from our U.S. 2011 Global Patent and IP Trends Indicator.  The diverse panel, representing a wide range of industries and filing strategies, included Tom Feix, Senior Corporate Counsel at Clorox, Derek Minihane, Head of IP Strategy for Cochlear, Larry Rozsnyai, Director of IP and Licensing at NovaBay Pharmaceuticals, and Aaron Smith, Corporate Counsel at Symantec.


Where to File?

The first question posed to the panel, which we often receive from our clients, was “how do you decide where to file”?  Tom Feix started the discussion by sharing that Clorox looks at several factors: where they have significant business, where they manufacture, and where their competitors manufacture.  Traditionally centered on the North American market, but with a growing presence in Latin America, Feix stated that “we’ve learned our way into this” and continually assessing and “pruning” their foreign portfolio has been a key success factor.

Derek Minihane said that you have to first have a clear understanding of why you are filing patents.  You must assess whether the main goal is licensing or freedom to operate, as the approaches can have very different filing profiles.  He shared that Cochlear has recently added Korea and China based on analysis and discussion with business units in those markets.  “Buy-in from your business people is a key factor [in deciding where to file],” he commented.

Aaron Smith shared that revenue is the top criteria for country designation at Symantec.  For each technology, they look at the 4 or 5 top-selling countries and pursue patent protection there.  “We’re more interested in preserving our ability to practice in certain countries,” he said.

For NovaBay Pharmaceuticals, which files key composition of matter patents, filing broadly (12-15 countries) is necessary.  Larry Rozsnyai said that at the point of filing, they are still several years away from product, so they need to be mindful of the protection they’ll need further down the road.


Cost Containment

Next, the panelists discussed strategies for cost cutting and problem-free prosecution.  Several went through a process of consolidating agents to gain efficiencies and cost savings. 

“We had interactions with 54 external counsel.  It was kind of bizarre.  So I picked 1 attorney in each foreign jurisdiction,” Minihane said.

Smith said that Symantec, who files 300+ applications per year, went through a similar consolidation process.  They interviewed potential foreign associate candidates, investigated cost and quality, and negotiated volume discounts.  “We were able to get some fixed fee-type arrangements.  Not across the board, though.”  He noted that for European validation, they were able to reduce costs by 40%.  In Japan, they were able to save nearly 50%.

On the flip side, Larry Rozsnyai said that NovaBay, with 6-7 applications filed per year, does not have the volume to negotiate fixed fees.  However, he suggested that companies make sure to check invoices diligently in order to stay on top of costs. 

Feix concurred. “In order to cut costs, first get a grip on what you’re actually spending.  Gather invoices and make sure you’re comparing apples to apples.”

We’d like to thank our panelists for sharing their experiences and insights.  For more information on foreign filing strategy, visit our resources page.   We also frequently cover the topics of where to file and cost cutting on our foreign filing blog.


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