Friday Foreign Filing Roundup

Hello everybody! Here at inovia, we celebrate innovation year-round, but this month is of particular importance as it is National Inventors Month. Started in 1998 by the United Inventors Association of the USA, this month-long event serves as a time to recognize creativity, entrepreneurship, and the real contributions that inventors make in our world.

natlinventorsmonth
Image Source: EdisonNation

According to WIPO's World Intellectual Property Indicators 2011,1.98 million patent applications were filed globally in 2010, with roughly 225,000 U.S. patents granted. Last month, the USPTO published a report showing that IP-related industries have contributed trillions of dollars and over 40 million jobs to the U.S. economy in 2010 alone. Intellectual property filings have spiked in the last few decades and we are seeing firsthand the importance of innovation and IP protection as it relates to the global economy.

This week's Foreign Filing Roundup is dedicated to those people who work in the forefront of innovation. Here at inovia, we feel that National Inventors Month supports the importance of work we do each day.

  •  In Praise of Irrational Innovators argues how the fanaticism that some inventors possess can be their strongest asset.
  •  Are you an innovator? Jeffrey Phillips of Innovate on Purpose lists 7 qualities that will help you answer this question.
  •  America, the land of entrepreneurs: 6.5 million new U.S. businesses were created in 2011.
  •  Rube Goldberg Machines are some of the most exciting to create and the most fascinating to see in action. Check out this article on the man behind these devices, which influence young inventors to this day.

To all of our friends and followers, have a great weekend! And remember, we tweet too @inoviaIP.

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PCT National Stage Entry Deadlines 101

Perhaps the most common, and most important, question we field here at inovia relates to when the PCT application needs to enter the national phase (or stage; the terms are interchangeable). The national stage filing deadlines occur 30 or 31-months from the earliest priority date claimed by your PCT application.

The 30 or 31-month deadlines are calculated from either:

  • the filing date of the earliest patent application to which the PCT application claims priority under the Paris Convention; or
  • the International filing date of the PCT, if no Paris Convention priority was claimed.

It is at this time that you’ll need to file your application into the countries or regions where you wish to pursue patent protection. Once filed into your desired countries/regions, the respective patent office will examine your PCT application.

Quite often, US-based applicants hope to wait until a favorable decision is reached in the USPTO before deciding whether to pursue international patent protection. Unfortunately, the current patent office backlog usually means that the US application is still pending when the national stage deadlines approach. Other applicants simply need more time to obtain funding.

As a result, our clients often ask whether they can delay national stage filing and what happens if they miss this deadline.

Unfortunately, the national stage deadlines for most countries are inflexible and missing these deadlines will jeopardize your chances of allowance. Picture your national stage application, your PCT application, and your priority application all connected by a chain. That chain allows the national stage application to claim priority to the earliest filed application. Breaking that chain by failing to meet your national stage deadlines means that your earlier applications can now be cited as prior art against you. This is why timely filing of your PCT application at the national stage is vital.

Luckily, some countries do allow for late filings.

CANADA

Applicants love the Canadian Patent Office, which allows late filings of up to 12 months after the 30-month national stage deadline for a small fee. You simply pay the fee retroactively when you do decide to file.

CHINA

China’s 30-month filing deadline can be extended by 2 months upon payment of an additional fee.

EUROPE

The EPO does allow for filings of applications that have missed the 31-month national stage deadline. However, late filing is not as simple as including an additional late charge. The application will need to be revived by filing a petition. Additionally, reviving your application will increase your filing fees by over 50%. Europe is already an expensive filing destination, so we strongly recommend that our clients file their PCT applications by the 31-month deadline.

BRAZIL

Brazil is a country that is increasing in popularity as a national stage filing destination. Brazil is a 30-month country that requires translation of the application into Portuguese. Although the translation of the specification can be submitted up to 2 months after the filing upon payment of a fee, the claims must be translated at the time of filing. Therefore, you need keep this in mind when providing instructions and allow sufficient time for the translation of the claims.

SOUTH KOREA

South Korea is a 31-month deadline country, so that provides some extra time for applicants to make their filing decision for that jurisdiction. However, there is no translation extension available, so you should send your South Korea filing instructions at least 1 month prior to the filing deadline, even more if you have a lengthy application to be translated.

OTHER COUNTRIES

Elsewhere, it might be possible to revive applications that have missed the national stage deadline due to an omission or error in spite of all due care being taken by the applicant and its representatives. However, given the onerous standards applied by many countries, and the often subjective nature of the decision, this is not an option to be relied upon.

Indeed, some countries offer no revival right at all. Japan, for example, simply does not have any mechanism to revive an application that has missed the national phase deadline.

LATE-FILING OF TRANSLATIONS

Assuming an English language PCT application, the majority of translation countries offer a period of one or two months (after either the national stage entry deadline, or national stage entry itself) within which the translation can be filed. We use these extensions ourselves if we don't receive instructions early enough to comfortably complete the translation by the deadline. There’s an additional cost (usually $100-200) in most countries for taking this option.

Looking for filing deadline information for other countries? Download our PCT national phase entry e-kit or contact us at mail@inovia.com.

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Findings from the 2012 PCT Yearly Review

The World Intellectual Property Organization (WIPO) recently released the 2012 edition of its PCT Yearly Review. You can download the full report here, but a few key statistics are:

  • The number of PCT filings set a new record in 2011 with 181,900 PCT applications filed. China, Japan and the U.S. accounted for 82% of the total growth.
  • The two millionth PCT application was filed in 2011. It took 26 years for one million applications to be filed, but only 7 years for the next million to be filed.
  • National phase entries increased in 2010 (last year of data pulled), with 477,500 made worldwide (7.7% growth over 2009).
  • U.S. applicants filed the most national phase entries (141,596), followed by Japan (90,000), Germany (55,234), France (26,172) and the United Kingdom (18,188).
PCT national phase entries for top 15 origins

PCT System Growth

The report also provides a look at the history of the Patent Cooperation Treaty. In the 33 years since the PCT’s inception, membership has grown from 18 states to 144 (soon to be 145). This represents 74% of the world’s countries. The geographical diversity of PCT applicants has also increased in tandem, with 128 different countries filing at least one PCT application in 2011.

Number of PCT member states

In a previous blog post, we discussed the record number of PCT applications filed in 2011 as well as the top applicants. The 2012 PCT Yearly Review also includes statistics on the top university applicants worldwide. Topping the list are the University of California (277 applications filed in 2011), Massachusetts Institute of Technology (179), University of Texas System (127), Johns Hopkins University (111) and Korea Advanced Institute of Science and Technology (103).

Trends in PCT national phase entries (PCT NPEs)

Increased focus placed on global markets and a growing PCT system has provided for a 7.7% increase in PCT NPEs in 2010, with 477,500 NPEs filed. In 2010, the majority (54%) of all non-resident applications received by patent offices were filed via the PCT (vs. the Paris Convention for direct filing). Our 2012 U.S. IP Trends Survey found this trend to be more pronounced among U.S. applicants, with 79% of respondents filing exclusively through the PCT.

Trend in PCT NPEs

On average, each PCT application was filed into 3.1 countries in 2010. This echoes findings from our survey, which found that respondents who typically filed their patent applications internationally filed into an average of 1-3 countries.

There’s a lot of great information in the full report; click here to download your copy.  You can also check out our PCT-related resources for more information on filing via the PCT.

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Brunei Darussalam Accedes to Patent Cooperation Treaty

On April 24, 2012, the Government of Brunei Darussalam deposited with the World Intellectual Property Organization (WIPO) its intent to accede to the Patent Cooperation Treaty (PCT). The Treaty will come into effect on July 24, 2012, making Brunei Darussalam the 145th PCT member state.

Interested in patent protection in Brunei? Here are some interesting patent facts for PCT’s new kid on the block.

  • Patent protection is relatively new to Brunei. They became a member of the Paris Convention effective February 17, 2012.
  • Patents are granted by the Patent Registry Office (PRO) at the Brunei Economic Development Board.
  • Brunei is a first-to-file country.

Although Brunei probably isn’t a high priority for many patent applicants, it’s great to see new countries recognizing the need to develop their internal patent systems.

Do you know of any PCT countries inovia should add to their roster? Let us know!

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inovia Travels: The 2012 INTA Annual Meeting

This past week a group of us from inovia attended the 2012 INTA Annual Meeting in Washington, DC.  It was quite an event and we're all hoping to catch up on some sleep this weekend!

inovia is becoming an INTA veteran, having exhibited there for several years now; however, this was our first year hosting a reception on the party circuit.  On Monday, May 7 we hosted a cocktail party to celebrate our 10th anniversary.  The party was at Bar 7, which was conveniently located across the street from the convention center.  We had a great turnout at the party and really enjoyed connecting with friends both old and new.   Here are a few photos from the event:

INTA Party 1
INTA Party 9
INTA Party 4
 
INTA Party 16
INTA Party 34
INTA Party 17

The atmosphere at the exhibit hall was not quite as lively as the nightly parties - but still busy!  inovia's booth was set up in stand #110, where we were providing information on our foreign filing platform and agent network.  If you missed us at INTA and want to see our platform in action, you can watch this 5-minute video or contact us for more information.

For those of you we met at INTA, we hope to stay in touch and look forward to seeing you next year in Dallas!

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Friday Foreign Filing Roundup

Hello to all of our IP friends! Take a look at the foreign filing/patenting news for the week of May 7th:

  • The USPTO is testing a new pilot program allowing applicants to have an Information Disclosure Statement (IDS) considered without filing a Request for Continued Examination (RCE).
  • "Innovations that are protected by IP are worth on average between 180 – 240% more than those that aren’t protected" via InnovationManagement.
  • Deciding Where to Pursue Patent Rights: Gene Quinn of IPWatchdog shares advice on patent filing at the international level and best practices for portfolio management.
  • This chart illustrates the USPTO's successful efforts to reduce the backlog of unexamined cases over the last 16 months.

Upcoming: Join us for a live event on May 22nd for International Patenting Strategies "101" to get an overview of the foreign filing process and cost-cutting strategies for patent applicants. And follow us! @inoviaIP

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Friday Foreign Filing Roundup

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, inovia.com. Have a great weekend!

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Learn more about inovia.com in an upcoming webinar

If you're new to inovia or know a little bit about us and would like to see our technology in action, I invite you to sign up for one of the webinars we're hosting this week about our inovia.com platform.  In the sessions, inovia Senior Patent Attorney Jeff Shieh will give a live demo of the inovia.com platform and also discuss where inovia fits in the foreign filing process.

The first session will be on Thursday, May 3 at 2pm EDT and the second will be on Friday, May 4 at 10am EDT.  We hope that you can join us!

For those of you not familiar with inovia.com, it's a foreign filing platform that allows users to:

  • Get accurate quotes for PCT national stage entry or European validation in just one click
  • File through the inovia agent network for 20-50% savings OR the agents of their choice
  • Place orders in minutes
  • Track the status of a case online

For instant access to inovia.com, you can create a free account here.  Please feel free to contact us if you have any questions.

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Friday Foreign Filing Roundup

Hi everyone! Take a look at these foreign filing/patenting news bits from the week of April 23rd:

  •  April 26th marked World Intellectual Property Day 2012, first initiated by WIPO's member states in 2000 as a time to celebrate visionary innovators and the contributions they make to the IP space.
  •  The EPO is joining forces with Logica to introduce a fully digital and innovative patent office, allowing for higher efficiency in patent searching, filing, examination, and more.
  •  Just weeks after acquiring Instagram, Facebook strikes another big deal, purchasing over 800 of AOL's patents from Microsoft.
  •  Is it possible to obtain a world-wide patent application? What is the national stage? How does one determine where to file for patent protection? Check out this article for great information on the PCT process via IPWatchdog. 
  • inovia news: Last week, we celebrated our 10th anniversary! Click here to see what some of our clients have to say about their experience with inovia as a strategic partner in the foreign filing space.

We tweet, too! Follow us @inoviaIP. Have a good weekend!

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inovia: 10 years later

This week we’re celebrating inovia’s 10th birthday! In April 2002, our founder Justin Simpson launched the company with his father Marcel by his side to celebrate. In the beginning, we were known as PCTFILER (later changing to inovia in 2008) and initially offered 7 countries in our foreign filing network.

Justin launches pctfiler 
PCTFILER Website

We’ve grown significantly in the last 10 years and a lot has changed. Just to mention a few things:

  • Our agent network has grown to cover over 80 countries.
  • The www.inovia.com website has a very different look and feel.
  • Our foreign filing platform, inovia.com, now offers instant quotes for PCT national stage entry and European validation as well as agent selection choice.
  • We’ve grown from two employees to over 30, with offices in New York, London, Munich, Sydney and Tokyo.

Over the last 10 years, we’ve also seen a shift in the industry’s perception of foreign filing outsourcing. Justin had his work cut out for him when he first started the company. It was difficult to convince attorneys and companies that foreign filing work should be turned over to a specialist provider, since the concept was completely new. The story was the same when annuities providers were first starting out – and now outsourcing is commonplace there.

However, Justin got early buy in from forward-thinking investors, agents and clients who shared his vision for a simple, cost-effective and high quality solution to foreign filing. Today, we’re proud to say that we’ve worked with over 1,000 attorneys, companies and universities to streamline their PCT national stage entry, European validation and patent translation work.

It seems that things are changing across the board in the legal industry, too. A recent About.com article listed legal process outsourcing, alternative legal service delivery models, and alternative billing models among the “10 trends reshaping the legal industry.” The idea behind these trends, as well as our work, is to make law firms and corporate IP departments more efficient. By leaving administrative work to specialist providers, our clients can focus on their substantive (and more lucrative) work.

I spoke with Justin last week about why he founded inovia and his take on the last 10 years. Here’s a little bit from our conversation:

What inspired you to build the inovia platform?

I was working as a software-specialist patent attorney in the late 90’s and saw first-hand my clients' struggles to afford foreign patent protection. When I looked into the work involved I could see that a lot of the costs happened at the initial filing stage when it was really just a process of filling in forms and paying fees around the world. I used my computer science background to design and patent some computer systems that automate the process and hence inovia was born.

What makes inovia stand out among its competitors?

Two things really – our technology and our great agent network. Because we’ve focused 10 years of IT development on automating the foreign filing process, I can honestly say that our technology for quoting on and filing patents is the best in the world. Our competitors either have no technology (doing everything by hand with paralegals) or they’ve attempted to copy our technology, but really haven’t done a great job. Secondly we’re backed by a network of top agents in 80 countries. Our competitors sometimes hide who their agents are, but we’re proud of ours. Most of them rank highly in the annual surveys by leading IP magazines, and the rest have been thoroughly vetted to ensure that their quality and client service match inovia’s high standards.

What one thing do you want the world to know about inovia, that they may not already know?

I think often patent firms see inovia as a competitor. But half of our clients are patent firms. Our technology simply provides a tool for patent firms to do foreign filing more efficiently, freeing up their billable hours for more substantive and strategic work. inovia is very very good at filling in forms. It doesn’t sound sexy, but that’s the heart of what we do. So attorney firms should take the time to explore whether they can make use of our tools and turn us from a (perceived) competitor into a partner.

What does the next 10 years hold for inovia?

I think we’re at a tipping point in the foreign patent filing space. When patent annuities started to be outsourced in the early 1970’s there was a slow growth. Then suddenly everyone realized that outsourced companies were best placed to handle annuities and a land-grab ensued around the world. I believe we’re at that point now. So although we handle the national phase of more PCTs than any law firm in the US, there’s a lot more room to grow. With 10 years’ experience and the best technology in the world, we’re well-placed to lead that change.

And we’ve got a range of new products we’ll be launching in the next 12 to 18 months that will expand our reach beyond PCT nationalization and European validation. But I can’t tell you too much, as it’s our little secret.


I also wrote to several of our clients to ask them about their feelings on inovia and the impact our service has made in their day-to-day work.

Jayshree Gerken, an attorney at JAG_IP_LAW, shared, "I provide strategic IP counseling to my clients, and I always recommend that they use inovia for their National Stage filings.  I have appreciated the professional and friendly services of several folks at inovia!"

Eva Pahus and Paul Hilton from FOSS ANALYTICAL A/S, wrote, “Using inovia has certainly helped us in streamlining our PCT national phase entry procedure and has led to significant cost savings. We find the ‘one-click-quote’ quite useful for preparing and budgeting the entries.  Finally, it’s most efficient that we only have to instruct multiple filings in only one instruction.”

Benita Rohm, Patent Attorney at ROHM & MONSANTO PLC, shared, "“Being from a small practice, one of the things that I find most beneficial in my relationship with inovia is having a trusted partner to take some of the administrative work required for filing off of my plate. It’s also really nice to have one stop shopping. Since I often get last minute instructions from clients, it’s much easier to issue one instruction and pay one fee for filing into multiple countries versus six.”


We’re certainly happy to hear that we’re making our clients’ jobs easier – after all, that’s why we were founded. You can read more client testimonials in our 10th anniversary press release.

I’ll leave you with a bit of inovia trivia: the patent filed for the technology serving the basis of our foreign filing platform (“System and method of attracting and lodging PCT national phase applications”) was recognized by WIPO in 2003 as a PCT Notable Invention.

Here’s to the innovations to come in our next 10 years… cheers, inovia!
 

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