Cost-Effective International Patenting Strategies:
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Cost-Effective International Patenting Strategies: Expand Your Global Opportunity Presented by Jeff Sweetman Head of Professional Services, inovia. New York | London | Munich | Sydney | Tokyo. Cost-Effective International Patenting Strategies: Expand Your Global Opportunity

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New york london munich sydney tokyo

Cost-Effective International Patenting Strategies:

Expand Your Global Opportunity

Presented by Jeff Sweetman

Head of Professional Services, inovia

New York | London | Munich | Sydney | Tokyo


New york london munich sydney tokyo

Cost-Effective International Patenting Strategies:

Expand Your Global Opportunity

Presented by Jeff Sweetman, Head of Professional Services, inovia

August 5, 2010

  • Agenda

  • Foreign filing overview

  • Foreign filing best practices7 rules for reducing foreign filing costs

  • 2010 U.S. IP Trends Report highlights

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Foreign Filing Overview


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Foreign Filing Overview:

Two approaches

Paris Convention

Direct filing into 173 contracting member countries

Patent Cooperation Treaty

Unified procedure for filing into 142 member countries

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Foreign Filing Overview:

Data from inovia’s 2010 U.S. IP Trends Report

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Foreign Filing Overview:

Pursuing global patent protection through the PCT process

  • To pursue patent protection around the world, start by filing a patent application in the country where you live (i.e. your home country).

  • This application is known as the priority application and the date it is filed is the priority date.

  • This protection is geographically limited.

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Foreign Filing Overview:

Pursuing global patent protection through the PCT process

  • A common way of pursuing patent rights outside of the home country is to file a PCT application.

    • Must be filed within 12 months of the priority date.

  • The PCT does not automatically result in global patent protection, instead it reserves your right to enter over 140 countries that are members of the Patent Cooperation Treaty (PCT).

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Foreign Filing Overview:

Pursuing global patent protection through the PCT process

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Foreign Filing Overview:

The importance of your patent translation

  • Required at the 30/31 month stage.

  • Quality is paramount.

  • 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.

    • It satisfies all local formatting requirements.

  • There are ways to save without sacrificing quality.

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Foreign Filing Overview:

Pursuing global patent protection through the PCT process

  • What happens after PCT national stage entry?

    • Your patent application will be examined.

    • If there are similar inventions to your application, you and your foreign attorney will need to respond and explain how your invention differs.

    • Once all of the objections are resolved, your patent will be allowed.

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Foreign Filing Overview:

European validation

  • To pursue patent protection in Europe, you must file a single European patent application with the EPO.

  • Once your patent is granted by the EPO, you will be issued a Notice of Intention to Grant (71(3) notice).

  • Your European attorney will have four months to lodge a translation of your claims and the required fees to the EPO.

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Foreign Filing Overview:

European validation

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Foreign Filing Overview:

European validation

  • Once validated, you do not need to go through any further prosecution in individual European countries.

  • Your patent will remain active as long as you continue to pay the yearly fees (annuities).

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Foreign Filing Overview:

PCT vs. Paris filing

  • Paris Convention Advantages

  • It can result in a faster granting of the patent.

  • Universal coverage (there are some non-PCT countries).

  • You can tailor application content for each country.

  • PCT Advantages

  • Simplicity: a single application can be filed in the applicant’s home country, in the local language.

  • It delays (by up to 18 months) the need to make a firm decision on which countries to enter.

  • Cost savings: it can be cheaper than direct filing for multiple countries.

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Foreign Filing Best Practices


New york london munich sydney tokyo

Foreign Filing Best Practices

  • Foreign filing can be very expensive.

  • IP departments and patent attorneys are under severe budget pressure.

  • A recession might last a year or two, but patents last for 20 years.

  • The key is to reduce foreign filing cost without just cutting countries!

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Foreign Filing Overview:

The seven rules for reducing foreign filing costs

  • Rule 1: File a PCT application instead of direct foreign filing.

    • Filing a PCT application delays the most significant foreign filing costs by at least 18 months.

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Foreign Filing Overview:

The seven rules for reducing foreign filing costs

  • Rule 2:Select countries intelligently.

    • Consider the “BRIC” countries (Brazil, Russia, India, China).

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Filing into the BRIC countries

Data from inovia’s 2010 U.S. IP Trends Report

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Foreign Filing Overview:

The seven rules for reducing foreign filing costs

  • Rule 3:Ace the patent application process.

    • Carefully review the application to avoid late & additional claim fees.

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Foreign Filing Overview:

The seven rules for reducing foreign filing costs

  • Rule 4:Choose a foreign filing service that’s on your side.

    • Specialist providers who utilize technology and buying power can offer significant time & cost savings.

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Foreign Filing Overview:

The seven rules for reducing foreign filing costs

  • Rule 5:Batch file to create economies of scale.

    • Instructing a large number of cases simultaneously can also save you time and money.

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Foreign Filing Overview:

The seven rules for reducing foreign filing costs

  • Rule 6:Consolidate providers.

    • This will increase buying power and lower your rates!

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Foreign Filing Overview:

The seven rules for reducing foreign filing costs

  • Rule 7:Bring tasks in-house, or outsource!

    • With sufficient volume, it can make more financial sense to employ an in-house paralegal and attorney vs. using an outside patent firm.

    • However, outsourcing, in the sense of coordinating foreign filings through a specialist service provider, is also a good way to reduce cost while maintaining or even increasing control.

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2010 U.S. IP Trends Report


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2010 U.S. IP Trends Report

An in-depth look at the foreign filing strategies of U.S. patentees

  • inovia surveyed 150+ small to medium-sized U.S. companies and universities to gauge the impact of the economic downturn on their global IP strategy and outlook for 2010.

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2010 U.S. IP Trends Report

Financial pressures

inovia’s Foreign Filing Platform

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2010 U.S. IP Trends Report

Foreign filing statistics

inovia’s Foreign Filing Platform

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2010 U.S. IP Trends Report

Foreign filing statistics

inovia’s Foreign Filing Platform

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2010 U.S. IP Trends Report

Financial pressures

inovia’s Foreign Filing Platform

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2010 U.S. IP Trends Report

Workflow and cost containment

inovia’s Foreign Filing Platform

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2010 U.S. IP Trends Report

Workflow and cost containment

inovia’s Foreign Filing Platform

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2010 U.S. IP Trends Report

Cutting foreign patenting costs

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U.S. IP Trends

University Survey

  • inovia also surveyed 265 university TTO professionals asking them to assign a priority level to the consolidation of foreign counsel and then explain their assignment.

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U.S. IP Trends

University Survey

  • 62% of respondents assigned this at very low to low priority.

    • We use outside counsel and do not wish to assume the extra burden of managing yet another relation.”

    • “[We] rely on domestic counsel to have the appropriate contacts for foreign filing.”

    • “I prefer that my outside attorneys have the freedom to choose outside counsel with whom they have good working relationships.”

    • “It is not an immediate problem, but I could see this becoming the case in the next few years.”

  • 38% of respondents assigned this at medium to very high priority.

    • “The matter is an important one regarding the economic crisis… companies [are] re-trending choices.”

    • “In the future clients will need it.”

    • “We have patents going through the process in several different countries. It would be an unbelievable dream to have a single office handling everything.”

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Survey Download

To download your copy of the 6-page report, visit:

inoviaip.com/TTT

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Thank You

For more best practices and tips on foreign filing strategy and execution, please:

  • Visit our website at inoviaip.com

  • Subscribe to our blog at info.inoviaip.com

  • Follow us on Twitter @inoviaIP

+44 203 326 [email protected]

Presented by Jeff SweetmanHead of Professional Services

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New York +1 212 217 9345 | Sydney +61 2 9290 2607 | London +44 203 326 8522 | Tokyo +81 3 6402 5446 | Online www.inoviaip.com | Email [email protected]


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