Case Study: inovia Helps KCI and Dentons LLP Streamline the Foreign Filing Process

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Kinetic Concepts Inc. (KCI) is a leading global medical technology company devoted to understanding, developing and commercializing innovative, high-technology transformational healing solutions for customers and patients in more than 25 countries around the world. A pioneer in Negative Pressure Wound Therapy, the company’s Vacuum Assisted Closure® Therapy (V.A.C.® Therapy), has been clinically demonstrated to help promote wound healing. KCI’s proprietary technologies have revolutionized the way in which caregivers treat a wide variety of wound types with V.A.C. Therapy used on more than 7 million patients worldwide.

KCI is committed to advancing the science of healing and positively impacting patient care by developing customer-driven innovation to meet the evolving needs of healthcare professionals. To protect its innovations and proprietary approach to wound healing, each year KCI files a significant number of U.S. patent applications and nationalizes a significant number of foreign applications using the corresponding PCT application.

With Growth, Comes Change

Prior to the 1995 introduction of V.A.C. Therapy, KCI had handled all of its patent preparation and prosecution work in-house. The tremendous growth and market adoption of V.A.C. Therapy as a standard of care for advanced wounds required that the company devote more resources each year to R&D, product refinement, expansion and intellectual property (IP). By 2006, KCI’s growth necessitated a review of its domestic and foreign filing procedures. KCI’s team for handling international patent filings was looking for better ways to improve its business.

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2011 NAPP Annual Meeting – Outsourcing Foreign Filing

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Last week, I had the pleasure of attending and speaking at the National Association of Patent Practitioners (NAPP) Annual Meeting. Presenters included directors from WIPO, law professors, and attorneys from the US and abroad, speaking on a diverse range of topics.

I was asked to speak on a subject near and dear to my heart: Outsourcing Foreign Filing. Below are some of the highlights of my presentation:

  • Legal outsourcing is on the rise, especially in the area of foreign filing.
  • Law firms are transitioning from a “one-stop shop” model to one where services are “unbundled”.
  • Clients are taking control of their legal services and fees.

I also discussed:

  • The logistics of working with an outside foreign filing provider
  • Common questions regarding foreign filing
  • Filing trends and current events in the IP space

Slides from my presentation (and those of all the other presenters) can be downloaded here. If you are not currently a member, I highly recommend checking out NAPP. Their annual conference is always well organized and packed with interesting topics and people.

And make sure to watch our 3-minute overview video to learn how inovia is working with clients to reduce the cost and administration of foreign filing.

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. 

Case Study: A Second Life in Patent Law

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Mike Ervin didn’t seek a career in patent law, it found him.  In 1970 Ervin took his Ph.D. in chemical engineering and went to work for DuPont, the science-based products and services company.  For the next 21 years he worked in various positions and divisions throughout DuPont including research and development, manufacturing management and at the executive leadership level.   During his tenure with DuPont and as Vice President of R&D for Imaging Systems and Medical Products, Ervin came to know the intricate workings of patents and the patent filing system both at home and abroad.

After retiring from DuPont in 1992 and returning to his home state of Texas, Ervin embarked on a second career going to work for an Austin-based technology startup.  Within the first six months, the company found itself in the midst of a patent infringement lawsuit that would take more than seven years to resolve with litigation spanning the world including Italy, Germany and Japan.

Given his past experience with patents earned during his time at DuPont, the Austin startup appointed Ervin Intellectual Property Officer where he worked closely with the legal team to handle patent issues and litigation on the international stage.  This quick-fire indoctrination to the inner workings of international patent law prompted Ervin to study patent law at night, while earning on-the-ground patent litigation experience during the day.

“My retirement was short-lived when I decided to take a position as VP of Engineering and Manufacturing at a fast-growth, Austin-based startup,” said Ervin.  “I didn’t know it at the time, but I’d eventually undergo a professional rebirth, first passing the USPTO Bar exam and then eventually starting my own practice helping small businesses and entrepreneurs navigate the complex world of foreign patent filing and the Patent Cooperation Treaty (PCT).”

The lawsuit was settled favorably for the company, which was soon acquired by a larger company – providing M.A. Ervin and Associates with its first client.

“I enjoy working directly with small business owners and solo inventors vs. attorneys at big corporations,” continued Ervin.  “I’ve deliberately built a law practice that is dedicated to cost-effective patent protection for companies with less than 75 employees. This client size and concentration allows me to be an integral member of the team and offer the company expert, patent prosecution capabilities that directly impact the company’s goals.”

Scalability the Key to Success

Ervin’s clients were aggressive about foreign filing and he soon found that being a one-man resource can have its limitations.  Ervin was not only doing substantive work such as drafting PCT applications, but handling the foreign filing paperwork and administrative processes for his clients as well.  He knew he had to find a solution that would help him streamline administrative tasks, free-up time to focus on revenue-generating work and most importantly enable M.A. Ervin and Associates to scale and grow.

“I knew there had to be an easier way to handle the abundance of paperwork required for foreign filings,” said Ervin.  “I took to the Web and quickly found inovia, which promised to provide a simple, reliable and affordable alternative to the traditional method of entering the national stage.”

Created in 2002 by patent attorneys, inovia offers a global instruction platform, inovia.com, that creates value for clients by reducing the cost and complexity of foreign patent filing.  Today, more than 1,000 companies, law firms and universities have used inovia.com to simplify PCT national phase entry, European patent validation and patent translations.

Time is Money

An inovia user since 2006, today M.A. Ervin and Associates has filed around 100 foreign cases through inovia.  Using inovia’s back-end document generation and docketing technology, Ervin estimates that he has cut administrative time by more than 50 percent, enabling him to redirect his time to revenue-generating activity.

“While the bulk of my client work involves domestic patent drafting and filing, I am approached by many clients who are seeking international patent protection. Having the ability to enter the national stage easily and work with trusted agents throughout the world to effectively manage deadlines and my case portfolio allows me to scale my business.”

inovia’s “1-click” quote capability has also proven to be a successful tool for attracting new business and providing prospects with accurate cost estimates for foreign filing.  Simply by inputting a PCT or EP number, the inovia.com platform automatically gathers the numbers of claims, pages and words to produce an accurate quote, allowing users to more accurately budget and compare costs in each country.  Within minutes, users can also place their order and track it online to know when their case has been instructed and filed.

“Using the inovia portal to generate accurate quotes is another huge advantage – it saves a tremendous amount of time and legwork and accelerates the new business process, helping the firm bring in new clients and new revenue quickly.”

For patent expert, registered patent agent and The Business of Patents editor-in-chief Mike Ervin, inovia has proven to be a winning relationship.

“I routinely recommend inovia to others in the Austin legal community,” shared Ervin.  “I couldn’t operate without the ability to file foreign and inovia has enabled me to do this and so much more.”