In late September, Managing Intellectual Property magazine posted the results of their 2013 PCT Survey, which ranks the top Patent Cooperation Treaty (PCT) firms by their number of applications coming due for national stage entry in 2013. I’m proud to say that inovia has placed first in the United States for the third consecutive year, handling the national stage entry of more than 1,500 PCTs in 2013. We also placed second in the global rankings behind our Chinese agent China-Pat Intellectual Property Office, who will handle 1,772 applications this year.
We take great pride in the quality and capabilities of our agent network, and would like to congratulate our associates who ranked among the top filers in their local markets:
- China-Pat Intellectual Property Office of China (#1)
- Nederlandsch Octrooibureau of the Netherlands (#2)
- Meissner Bolte & Partner of Germany (#2)
- AFD China Intellectual Property Law Office of China (#3)
- Sunyoung International Patent & Law Firm of Korea (#3)
- Ridout & Maybee of Canada (#3)
- S. Majumdar & Co. of India (#3)
- Bereskin & Parr of Canada (#4)
- Borden Ladner Gervais of Canada (#5)
- Harness Dickey of the United States (#8)
- Hanol Intellectual Property & Law of Korea (#9)
- Shelston IP of Australia (#9)
- Freehills Patent Attorneys of Australia (#10)
- Kilburn & Strode of the United Kingdom (#10)
As part of this year’s PCT Survey, Managing IP‘s Peter Leung spoke with inovia CEO David Nelson and other industry experts to examine the impact that “IP Portals” are having on the industry. The article references IP consultant Duncan Hart (watch the webinar we hosted with Duncan back in January on demand), who has written about how IP portals disrupt the relationships that patent attorneys have with their clients. On the contrary, Nelson and representatives from other IP portals point out the growing trend of IP firms turning to IP service providers in order to make their own practices more efficient. You can read the full article from Managing IP here - we’d love to hear your opinions on this topic in the comments section below.
The 1,500+ PCTs that inovia will handle in 2013 reflects a 10% increase from last year and is more than double the number of filings handled in 2011. If you’d like to learn more about how inovia can fit into your foreign filing practices, please feel free to get in touch with the inovia office nearest you.
Managing Intellectual Property magazine recently published the results of its 2013 “Patent Survey,” which ranks the top firms for prosecution and contentious work in more than 80 countries. As a testament to the quality of our agent network, inovia’s agents in 46 countries were listed in the rankings (many for consecutive years), with agents in 19 countries achieving the highest possible “tier 1” rank.
Managing Intellectual Property magazine recently published the results of its 2014 “Patent Survey”, which ranks the top firms for prosecution and contentious work in more than 70 countries. As a testament to the quality of our agent network, inovia’s agents in 39 countries were listed in the ranking (many for consecutive years), with agents in 18 countries achieving the highest possible “tier 1” rank.
“We want to congratulate all of the inovia agents who ranked so highly in this year’s Managing IP survey”, commented our founder, Justin Simpson. “One of the main reasons inovia has become the leader in this field in the last 12 years has been the quality of its agents. When clients trust inovia with their foreign filings, they are also trusting the foreign patent firms we’ve selected. We are still seeing the majority of our clients take advantage of the cost savings by using an inovia agent for their foreign filing needs.”
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.
While we presently accept externally-prepared translations in principle, we sometimes find that translations we receive from clients are not of high quality.
Additional costs are then incurred in having our agents “fix” the translation. Worse (if it’s not bad enough), the client may end up paying the full cost again to have it translated from scratch – not ideal if they’ve already paid for the first one!
You should be able to say the following about a patent translation:
It is a true and accurate translation of the source document.
The translator is a native speaker of the destination language.
The translator is technically skilled in the relevant technology.
It takes into account any specialist legal language used by patent attorneys in the destination country, including idiomatic translation of special technical or legal words used in the source document.
It satisfies local formal requirements relating to character set, font size, spacing, margins and so on.
In our experience, translations prepared by anyone other than a specialist patent translator run the risk of significant deficiencies in some or all of the above areas.
For example, it is rare that even a person very skilled in the relevant technical field who writes well in the destination language and has a good understanding of the source language will have any knowledge of the legal language issues, or of the formalities.
The service level agreements we have with our agents require them to satisfy all the above criteria. We also require that the translation either be prepared by a patent attorney or comprehensively reviewed by a patent attorney prior to filing.
In virtually all countries, it is the translation that forms the basis for your rights. Any weakness or deficiency in the translation is a weakness or deficiency in the resultant protection – and worse, it’s one you won’t know about until it’s too late.
If you have thoughts about translations (and particularly the importance of quality), we’d love to hear them.
We recently gave a brief summary of the impending 1 April 2010 changes to European rules.
New Rule 62A: Independent Claims
Today, we’re going to go into a little more detail about the changes to management of independent claims in Europe under the new regime.
Under current European practice, typically only one independent claim is allowed in each claim category (apparatus, method, etc).
However, there are some exceptions:
Inter-related items (for example, a plug and socket; gene, gene construct, host, protein, medicament; intermediate and final chemical product).
Multiple different inventive uses of a product or device (for example, different second or further medical uses).
Examples of alternative solutions to a problem (for example, groups of chemical compounds; two or more processes for manufacturing a compound).
At the moment, the EPO searches all claims, and then raises an objection during examination if it is considered there are too many independent claims in each category.
Under new Rule 62a:
The EPO will no longer search all independent claims in each category. Instead, the new procedure will be to invite the applicant to select which claim in each category should be searched (and therefore examined).
The subject matter of the remaining independent claims may need to be made the subject of a divisional application if it cannot successfully be argued that an exception (such as one of those listed above) is appropriate.
If no claim is selected, the EPO will automatically search only the first claim in each category.
Which applications are affected?
For various technical reasons, the new rules will only affect cases where the International Search Report was not prepared by the EPO.
The rule applies to all applications where the European search report issues after 1 April 2010.
What needs to be done?
For PCT applicants entering the regional phase in Europe, there is an opportunity to amend the European claims either at regional phase entry, or following issuance of a rule 161 communication (we’ll post about that soon). This is the last opportunity to get the most appropriate claims on file before the search process begins.
Need more information?
Our European agents, Kilburn & Strode, have prepared briefing papers summarising the main impending changes to European practice. The papers can be downloaded from their website.
It’s a few weeks before the 30 month deadline for national stage entry of one of your client’s PCT applications. The client calls you and tells you one (or more) of the following:
- The sole inventor has just assigned her rights to a company
- The corporate applicant’s address changed a couple of months ago
- One of the inventors currently recorded against the PCT application was listed by mistake and needs to be deleted
- The wrong serial number is recorded for the priority document (it was correct on the Request)
- The inventors are listed as co-applicants with the corporate assignee for all countries, when they should only be applicants for the USA
Is it worth recording any of these changes at this late stage?
It’s rare I’m asked a question in the patent field that I feel so comfortable answering with a one word answer: YES!
In many countries, if this sort of information is updated during the international stage of the PCT, you won’t need to do or submit anything else during the national stage to complete the correction. That means you’ll save yourself (or your client) the cost and effort of recording changes in individual countries and regions. These costs can be substantial if there are lots of countries involved.
Also, in some countries, making these sorts of changes is considerably more difficult than making them during the international phase.
WHAT PROOF IS NEEDED?
To make the change during the international phase, you don’t need to supply documentation or any other type of evidence. In contrast, many countries will at least want to see copies – and maybe certified copies – of documents supporting these types of changes if you try to make them after national phase entry.
Even in countries where evidence needs to be provided at or after national stage entry to support changes made during the international phase, having recorded the change beforehand will nearly always reduce the costs to some extent.
WHO TO CONTACT
Applicants and their authorised representatives can certainly make changes like these via their local receiving office (i.e., the patent office with which the PCT application was originally filed). However, to speed things up and reduce the chance of transmission delays or errors, in my opinion you’re better going straight to the source and correcting the information directly with WIPO.
You can find the contact details of the team handling a particular application by searching on the PCT application number at the following page: http://www.wipo.int/pctdb/en/iateamlookup.jsp
You have until the 30 month deadline to ask WIPO to make changes to PCT bibliographic information. Even if WIPO doesn’t have time to send confirmation of the change to the applicant or their attorney until after the 30 month deadline has passed, the new data will still filter through to the relevant patent offices after national stage entry.
ANY OTHER TIPS?
When instructing foreign associates to enter the national stage, be sure to give them a clear picture of any changes that were made during the international stage of the PCT procedure.
If the form from WIPO confirming that the change has been recorded (Form PCT/IB/306) has been received, provide a copy to the associate with your instructions.
Alternatively, if the change has been requested but not yet formally recorded by WIPO, it’s important you explain this to the associate with your instructions to minimise confusion.
If you need help on this topic, you can contact WIPO directly or the PCT help desk at your local patent office for more information.
Alternatively, feel free to call us or drop us an email and we’d be happy to help you in any way we can.
We are pleased to welcome the law firm of Arnason Faktor as our new Icelandic agent, expanding our global agent network to 63 countries now.
Sigurour Ingvarsson of Arnason Faktor said, “We are delighted to join the inovia network and help promote global patent protection into and from Iceland. We support both domestic and international clients with a range of IP-related consulting services and business development.”
Arnason Faktor, established in 1969, is the largest IP consultancy firm in Iceland and has been ranked the top patent firm in Iceland by Managing Intellectual Property magazine. They specialize primarily in drafting and prosecution of IP rights for both the international business community and domestic clients requiring local and international IP services.
You can visit them online at Arnason Faktor.
Nearly all applicants pursuing international patent protection are aware of the importance of choosing a competent foreign agent, but often do not know exactly what factors to look for when selecting one.
Some applicants simply rely on the network of agents currently retained by their domestic counsel. However, this strategy can be hit-or-miss and is often as much based on indirect benefits to the domestic law firm (e.g. reciprocity) as on what’s best for the applicant.
Based on my experience, here are some of the criteria I believe applicants should look for in choosing or evaluating their foreign agents.
• Ability to communicate effectively in English. Patent law is complicated enough. No need to make things worse by speaking with someone less than proficient in English.
• Experience in a broad range of industrial fields. You certainly don’t want someone with an electrical engineering background prosecuting your pharmaceutical application.
• Ability to forward communications from their local patent office to the client in a timely manner, and diarize any deadlines. Few things frustrate patent attorneys more than receiving a foreign office action, and finding that the first month out of a 4-month period for response has already lapsed.
• Expert translations of foreign documents into English. Incoherent translations require a call to the foreign agent for clarification. And then you’re likely to run into the problem discussed in the first bullet point.
• Ability to receive instructions and lodge a response in accordance with those instructions. Applicants need to make sure foreign agents understand their prosecution strategy and follow it.
• Ability to advise on any idiosyncrasies of the local jurisdiction. Many U.S. practitioners are unaware of the nuances of patent law in foreign jurisdictions. A good foreign agent will modify applicant’s instructions so they make sense in their local patent office.
These certainly are not the only factors one should look at when searching for an agent to represent their invention in a foreign jurisdiction. However, we’ve found that those agents who do satisfy all these criteria contribute immensely in minimizing any potential snags that may pop up during prosecution.
Separately, see this older post for tips to minimize costs when instructing patent attorneys.
We are pleased to announce our new office in Munich, Germany and the appointment of Wolfgang Danner as Senior Director, Business Development.
“Germany files more PCT applications than any other country in Europe – 15,000/year, which is on par with the US per capita,” said David Nelson, CEO of inovia. “We are delighted to have Wolfgang Danner, an experienced and respected IP industry executive, spearhead our presence and help bring inovia’s foreign filing efficiencies to the German market.”
Danner comes to inovia from Dennemeyer & Co., where he was Global Head of Sales and Marketing. He had previously co-founded IPAN, setting up their global partner network as its Head of Sales and Marketing. He also held a senior sales role at CPA Global and brings to inovia 25 years of experience in Sales management and the Intellectual Property (IP) field.
“I am happy to see further expansion into our national market,” said Wolfgang Danner. “I look forward to working with inovia – and Fleuchaus & Gallo, our German associates – to offer both German and pan-European patent applicants our foreign filing products so they can cost-effectively take their innovations to the world.”