Friday Foreign Filing Roundup

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Hello everyone! Here’s a look at the foreign filing/patenting news from the week of July 2nd:

  • As part of a larger effort to spur economic development and increase American innovation, The U.S. Commerce Department has officially named the four locations that will act as regional patent offices under the USPTO.
  • According to INSEAD’s Global Innovation Index, the United States ranks only #10 amongst the “top innovators”, with Switzerland claiming the number one spot.
  • As of July 1st, the consolidated text of the  “Regulations under the PCT” have now been made available in Arabic, German and Russian by WIPO. Check out more PCT resource updates here.
  •  While the specifics of Europe’s unitary patent court are still being worked out, many are weighing in on the effect that this change could have on business and the global economy at large.
  • A recent analysis shows that universities are not being vigilant about paying their patent maintenance fees, most likely due to intentional abandonment of under-performing IP assets.

We’d love to hear your thoughts! Leave a comment below and don’t forget to follow us on Twitter @inoviaIP.

Friday Foreign Filing Roundup

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Hi everybody! We’ve rounded up the latest in foreign filing news from the week of October 22nd:

To all of our friends braving the storm on the east coast, have a safe weekend!

Friday Foreign Filing Roundup

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Hi everyone! Before you take off on your Labor Day weekend, have a look at the foreign filing/patenting news for the last week of August:

  • More on the America Invents Act: Can any patent applicant qualify as “small entity“?
  • Australia Reforms Its Patents Act 1990 – Patent Docs writes of the implications expected from the Raising the Bar Act, which was signed this past April.
  • A report released by the Association of University Technology Managers shows just how lucrative licensing agreements can be for university inventions.
  • Cambodian economic leaders plan to enhance IP laws over the next few years with the support of WIPO.
  • The USPTO will hold two public informational events next week highlighting the AIA’s rules set to take effect on September 16th.

We love hearing your feedback and welcome any comments you have on the above topics. Have a great weekend and if you haven’t already, please follow us on Twitter @inoviaIP!

Friday Foreign Filing Roundup

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Welcome to this week’s Foreign Filing Roundup, where we take a look at the foreign filing/patent law news from the week of February 6, 2012:

  • An agreement for a unified European patent is expected “in days,” according to the EU’s Internal Market Commissioner.  We’ll see.
  • The JPO and EPO have reached an agreement on machine translations.
  • The Association of University Technology Managers (AUTM) recently launched a portal to facilitate cooperation and networking between universities and potential licensees.
  • An article from The Economic Times compares filings across the euro zone: Greece and Portugal filed fewer than 8 applications per million inhabitants with the EPO in 2010, compared to Germany’s 335 applications per million inhabitants.
  • USPTO proposed fee changes are open for public comment.  See our blog article.

Please feel free to share any news we’ve missed and your comments on these topics below.  You can also follow us on Twitter @inoviaIP.

Have a great weekend!

AUTM 2012: Cost-Effective International Patenting Strategies

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inovia and a group of four panelists discussed strategies for cost-effective foreign patent filing at the AUTM 2012 Annual Meeting last week in Anaheim, CA.

IP portfolio strategy, cost-effective foreign filing, Patent Prosecution Highway (PPH) programs, and effective use of the Patent Cooperation Treaty (PCT) were the key topics of discussion in the “Cost-Effective International Patenting Strategies” session (March 16, 11am-12:30pm).

inovia founder Justin Simpson moderated the panel and provided an overview to foreign patent filing, specifically PCT vs. Paris Convention filing, the PCT process, and the European validation process. Simpson also provided a rough guide to estimating international patenting costs, which can get quite expensive. He referenced paid and subscription-based cost calculation tools, as well as the inovia 1-click quote tool.

The panelists, which included Matthew Bryan from the World Intellectual Property Organization (WIPO), Derek Eberhart from the University of Georgia Research Foundation, Susanne Hollinger from Emory University, and Alan Kasper from Sughrue Mion, then shared insights into international patenting strategy.

The university panelists started the program with a discussion on IP portfolio strategy. Susanne Hollinger shared that more than half of Emory’s royalty money comes from technologies that have been filed internationally, establishing that it’s important for their Tech Transfer Office (TTO) to consider international patent filing with or without a licensee. She stressed the importance of treating every case uniquely and warned against blanket rules such as “we only file if we have a licensee.” In order to evaluate cases, she provided the following set of questions to consider:

  1. Does it make sense? Is the case even protectable internationally?
  2. Do you need it? Understand how foreign filing will affect a deal.
  3. Can you afford it? You often have to make the decision with your own money in mind.
  4. Where to do it? Where is the market today and in five years?

She also encouraged TTOs to get licensee feedback when making international patenting decisions.

Derek Eberhart echoed these tips and encouraged TTOs to leverage their network in the decision-making process. Reach out to consultants to get market information, contact other TTOs, and get feedback from licensees. Eberhart also suggested leveraging your alumni network for IP or marketing help and gave an example of a University of Georgia alumnus who is now a foreign associate that the University of Georgia can call on. His final recommendation was that TTOs take ownership of the foreign filing process, as opposed to just leaving that up to their U.S. counsel, who may not have cost-saving interests at heart.

Next, Alan Kasper discussed PPH strategies for universities. He had 24 slides to get through and amazingly was able to share a wealth of information (and get all the way through his slides) in just 10 minutes! Kasper gave a brief introduction to the PPH and the current PPH network and then shared some positive results of the program, such as that USPTO allowance rates in PCT-PPH cases are at 91% (vs. 49% for all cases). He also shared that the cost savings can be upwards of $13,000 per case. You can read more about the PPH on our blog.

Finally, Matthew Bryan, who is the Director of the PCT Legal Division at WIPO, discussed how TTOs and other applicants can use the PCT to their advantage. He started by asking who in the room has used or uses the PCT for international patent filing (vs. direct filing) and nearly every hand in the room raised. According to Bryan, it was a very different case in the 1990’s, when WIPO had to encourage applicants to try the PCT. Bryan advised the audience to make informed choices when filing a PCT application; for example, he mentioned that using the Russian Patent Office as a search authority is a very sensible option cost-wise. He also made two important announcements: 1) As of January 1, 2012, applicants can now indicate in the PCT application if the invention is available for license, which is an option that TTOs should make use of; 2) New countries, namely Brunei and Saudi Arabia, are in the works for the PCT, so we look forward to hearing more about that.

We’d like to thank the panelists for participating in this discussion. For more information on foreign filing strategy, visit our resources page. You can also follow us on Twitter @inoviaIP for industry news, webinars, and upcoming inovia events!