Friday Foreign Filing Roundup

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Hello everyone! Take a look at what’s been happening this week in the foreign patent filing space:

  • To date, 25 member countries have signed on the new European unitary patent system.
  • The USPTO has updated its IP Awareness Tool, a great resource for innovators looking to educate themselves on protecting intellectual property.
  • March is already here, and so the countdown begins to March 16th: The Final Chapter of the America Invents Act.
  • China’s one millionth granted invention patent “illustrates progress” for the country’s innovative future.

Are you a solo inventor or small business considering foreign patent protection? Sign up for our free webinar, “International Patenting Strategies “101”, to discuss the PCT process and tips for cutting significant costs at this stage.

New Israeli Patent Fees Effective 1 January, 2013

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On January 1st, 2013 the Israeli Patent Office will implement new regulations dramatically affecting official fees for both local and PCT applications entering the national phase. The tables below detail each of the fees required by the Office with the designated changes.  For the most part, applicants can expect sharp increases in both filing and renewal fees:

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*New fee applicable 1 January 2013
**Approximate currency exchange rate as of 19 Dec 2012

Fortunately, the new amendment offers some relief to individual inventors and smaller companies. Corporate applicants having a turnover of less than ILS 10 million (US$2.7 million) in the last calendar year qualify for a 40% reduction on the filing and nationals fees. For everyone else, filing on or before December 31st, 2012 will guarantee the existing official fees.

For a complete summary of Israel’s requirements for entry into the national phase, check out WIPO’s PCT Applicant’s Guide. And if you’re interested in a free 1-click cost estimate for your PCT, simply register with us at

Friday Foreign Filing Roundup

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Hi everyone! We’re wrapping up this week with a look at the best foreign filing news from around the world:

  • The EPO reported a record number of activities for 2012, with over 65,000 granted patents published.
  • The USPTO is teaming up with the Smithsonian Institution to host this year’s Innovation Expo.
  • WIPO’s newly released 2012 IP Indicators Report shows another record year for global patent filings.
  • Our own, Jeff Shieh, provided a quick update on the new PCT-PPH programs that launched this year. Read more >

If you’re an IP professional in the United States, we invite you to participate in our US IP Trends Survey. Each year, we analyze the foreign filing strategies of US patentees and gauge the outlook for the coming year, covering topics such as IP budget changes, preferred filing destinations, and more.

How to Apply for an International Patent

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With today’s international markets, foreign competitors and overseas manufacturers, it’s no longer sufficient to simply obtain patent protection in your home country. More and more applicants are filing abroad, resulting in record numbers of foreign applications. So what are the steps in filing your application internationally?

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One way to file a patent application in a foreign country is by filing via the Paris Convention. Typically, applicants will first file a patent application in their home country. If that home country is a member of the Paris Convention, the applicant has 12 months to file a corresponding application with the patent office of another contracting State. Under the Paris Convention priority right, any later-filed application will be afforded the earlier filing date of the first application.

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International Patenting Strategies 101 (inovia webinar)

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Today, inovia‘s Senior Patent Attorney Jeff Shieh presented the live webinar International Patenting Strategies “101”.  Click on the video below to view this 30-minute program, in which Jeff gives an overview of the international patenting process, provides tips for reducing patent costs, and gives a live demo of the platform.

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Inventor resources: Filing a Patent Overseas

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inovia‘s Small Business Solutions Team works with startups and solo inventors across the globe to assist with the international patent filing process. Led by inovia‘s Senior Patent Attorney, Jeff Shieh, the team walks patent applicants through the stages necessary to gain international patent protection and, ultimately, how to proceed in doing so. As one might expect, we hear many of the same recurring questions from our clients, so we sat down with Jeff to compile a list of these frequently asked questions:

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Foreign Filing Tips for Small Companies and Sole Inventors

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There’s been plenty of buzz in the news recently regarding the patent battles raging between tech and communication giants, as these parties spend millions filing applications or procuring outside portfolios.  On a much smaller scale, but no less important to the parties involved, are the efforts of small companies and sole inventors to protect their intellectual property.  But with limited manpower and budgets, how can a small entity applicant maximize his patent protection?

Since inovia‘s inception nine years ago, we have helped many individual inventors and small companies streamline and reduce the costs of PCT national stage entry and European validation.  I’ve compiled a list of tips and strategies for these applicants to keep in mind when pursuing patent protection:

Get familiar with the patent process
Applicants can save a lot of time (and money) with even just some passable knowledge of the patent process.  For example, knowing when deadlines are approaching helps you to plan ahead and avoid any unnecessary time extensions and late fees.

Minimize the role of your law firm
Of course, most applicants need outside counsel to handle the substantive prosecution of their applications.  But many of our smaller clients have arrangements in place where they get “first crack” at any incoming matters.  Even producing a rough outline for a response to an Office Action, for example, reduces the work for their attorney, which cuts the cost for the applicant.

File under small entity status where you can
Many jurisdictions offer fee reductions for applicants eligible for small entity or individual status.  Ask your attorney where these discounts are available; just be sure that you definitely qualify for small entity status.  Incorrectly claiming small entity status can result in dire consequences.

Utilize inovia‘s resources
Our website contains a number of links and documents to assist applicants.  We have overviews of the PCT national stage entry and European validation processes, as well as a foreign filing blog covering issues affecting the IP industry.  Additionally, many small applicants need to be able to predict their patent costs.  Our 1-click quote tool allows them to generate accurate quotes for national stage filings and European validation.  Many clients have found that these quotes are especially useful when speaking with investors and licensees.

I hope these tips come in handy.  Please feel free to leave a comment below or give us a call if you have any questions.  Good luck patenting!

What the America Invents Act Means for Inventors/Small Companies

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The America Invents Act has attracted a lot of buzz.  Whether it spurs job creation and innovation remains to be seen, but in this article I’d like to focus on the provisions of the Act that are most relevant to inventors and small companies.

Change to First-to-File

Perhaps the most publicized change arising from this bill is the transition from the current “first-to-invent” system to a “first-to-file” system.  This will move the US patent system closer in line with that of the rest of the world, but the first-to-file system increases the pressure to file an application as soon as possible.  For most small applicants, spending time to raise funds or obtain a licensee now runs the risk of losing priority to an earlier-filed application.

New Micro Entity Status

Of particular interest to the small applicant is the creation of a new class of inventors with the Act: the “micro entity.”  Previously, a 50% reduction for certain fees was available for applicants qualifying for small entity status.  Under the America Invents Act, micro entities would be eligible for a 75% reduction in fees.

Micro entity status will certainly be appreciated by the smallest applicants especially because of the scheduled…

Increased Service Fees

Unfortunately, the America Invents Act also includes a 15% bump in all patent fees.  The USPTO has posted a revised fee schedule on their website. 

Mitigating the Impact

Despite the new micro entity status, the provisions of the America Invents Act are likely to cause financial strain on inventors and small companies.  However, there are a few tips that you can leverage to mitigate the impact.  In an earlier post, I discussed how applicants can reduce costs by getting familiar with the patent process and minimizing the role of their law firm.  In light of the new first-to-file system, applicants should also consider filing a provisional patent application.  A provisional application is a relatively inexpensive way to get an earlier priority date, while simultaneously buying some time to raise additional funding or license the invention.

Finally, applicants should consider the full scope of their filing strategy.  While it will now cost more to obtain a US patent, applicants seeking international patent protection may be able to reduce the cost of foreign filing by outsourcing parts of the process (PCT national stage entry, European validation, annuities, etc.) to specialist providers. 

If you’re curious to compare foreign filing costs, you can register on our platform and get an instant quote. 

Friday Foreign Filing Roundup

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Hello everybody! Here’s a look at the foreign filing/patent-related news for the week of June 11th:

  • EPO President Benoît Battistelli is calling for a stronger framework of IP rights for inventors, including “a cost-effective and legally safe patent system.”
  • David Kappos of the USPTO recently listed 12 reasons why his office is moving to Cooperative Patent Classification (CPC), a joint initiative shared with the European Patent Office.
  • After more than 5 years of implementation, the Japanese Patent Office (JPO) and the Korean Intellectual Property Office (KIPO) have agreed that July 1st, 2012 will be the official start of the PCT Patent Prosecution Highway pilot program between the two countries. 
  • The U.K. and the U.S. are joining forces to enhance the international patent filing system, beginning with improvements to the UKIPO’s Fast Track System, to create a more flexible and efficient PCT process for patent applicants.
  • And the winners of the EPO’s European Inventors Award 2012 are…Congratulations to all!

inovia has an abundance of resources relating to PCT national phase entry and European validation. Contact one of our offices today for more information!

Friday Foreign Filing Roundup

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Hi to everyone! Here’s a look at the foreign filing/patenting news for the first week of May:

Upcoming: inovia will be exhibiting at INTA’s 2012 Annual Meeting (May 5-9th, Washington D.C.). Visit us at booth 110; we’d love to chat with you! If you’re not attending, sign up for a live webinar to get a demo of our global foreign filing platform, Have a great weekend!