Global Patent Protection Strategies and Foreign Filing ...€¦ · • Implement a foreign filing...
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Global Patent Protection Strategies and Foreign Filing Licenses May 14, 2020 Patent Webinar Series
Transcript of Global Patent Protection Strategies and Foreign Filing ...€¦ · • Implement a foreign filing...
Global Patent Protection
Strategies and Foreign Filing
LicensesMay 14, 2020
Patent Webinar Series
Overview
• Topics
– Important Decisions
– Developments
– Practice Tips
• Housekeeping
– CLE
– Questions
– Materials
• http://www.fr.com/webinars
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Agenda
• Foreign Patent Filing
• Decision-making process
• Where to File
• Where not to File
• Requirements for Filing Licenses from Other Countries Prior to Filing in the US
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Foreign Patent Filing
Flow of applications between IP5 countries
fr.com | 7From IP5 Statistics Report 2018
National Stage Destinations Following Priority Filing
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From EPO DOCDB Database
Costs – National Stage
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Country Official Fees Translation Misc. Associate In-house Fees Annuities Total
AR $416 $3,219 $76 $7,748 $600 $10,661 $22,449
AU $1,084 N/A $76 $4,678 $600 $15,171 $21,609
BR $607 $2,925 $76 $4,595 $600 $14,433 $23,236
CA $1,076 N/A $76 $3,704 $600 $10,969 $16,425
CN $1,152 $4,405 $76 $3,135 $600 $16,966 $26,335
EP $8,295 N/A $0 $7,464 $500 $1,986 $18,245
IL $1,022 N/A $76 $5,663 $600 $7,325 $14,686
IN $901 N/A $76 $4,153 $600 $10,868 $16,598
JP $2,563 $7,316 $76 $5,281 $600 $17,813 $33,649
KR $1,893 $5,280 $76 $3,275 $600 $20,507 $31,631
MX $667 $2,842 $76 $5,493 $600 $2,567 $12,295
NZ $767 N/A $76 $3,724 $600 $11,976 $17,143
RU $332 $4,680 $76 $3,746 $600 $8,944 $18,378
SG $1,494 N/A $76 $3,785 $600 $13,386 $19,341
TW $850 $3,418 $76 $3,080 $600 $11,413 $19,437
TOTALS $23,119 $34,085 $1,064 $69,524 $8,900 $174,985 $311,457
Using Global IP Estimate; assuming 50 pages, no drawings, 25 total claims (with 3 independent claims), large entity
Costs – EP regional stage
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Using Global IP Estimate; assuming 50 pages, no drawings, 25 total claims (with 3 independent claims), large entity
Country Official Fees Translation Misc. Associate In-house Fees Annuities Total
BE $0 0 $0 $705 $0 $10,852 $11,557
CH $0 $0 $0 $724 $0 $13,961 $14,685
DE $65 $0 $0 $710 $0 $20,921 $21,696
ES $629 $3,147 $0 $887 $0 $11,816 $16,479
FI $434 $0 $0 $1,361 $0 $14,922 $16,717
FR $0 $0 $0 $629 $0 $12,596 $13,225
GB $0 $0 $0 $558 $0 $11,434 $11,992
IT $0 $3,581 $0 $705 $0 $13,096 $17,382
NE $27 $0 $0 $699 $0 $16,254 $16,980
SE $0 $0 $0 $892 $0 $12,498 $13,390
TOTALS $1,155 $6,728 $0 $7,870 $0 $138,350 $154,103
High Level Considerations for Foreign Filing
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• Company’s goals
• Company’s profile
• Company’s resources to be devoted to patent protection
Considerations
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• The “adequacy” of the patent and legal systems including:
– considerations relating to procuring the patent right, including costs, timing, scope, patent
eligible subject matter, etc.
– the current and expected future state of the patent law relevant to enforcement of the patent,
including immediate remedies, long-term remedies, availability/size of damage awards,
availability of injunctions, etc. [how things will look in ~ 10 years?]
Patent system in each country
Considerations
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• Costs and relative ease/difficulty of filing and prosecution
• Availability of delayed examination and accelerated examination
• Length of examination/time to grant
• Grace periods following public disclosure v. absolute novelty
• Quality of examination
• Possibility for opposition filings
• Patentable and non-patentable subject matter:
– Software
– Business methods
– Pharmaceuticals, methods of medical treatment
– Cloned genes, transgenics
Procurement of patent
Considerations
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• Border Protection (customs?)
• Available remedies for infringement under local law:
– Preliminary/permanent injunctions, seizure actions, border actions, availability of and amounts of/limits on damage awards, criminal/civil penalties, etc.
• System(s) for dispute resolution
– Civil courts, patent courts, patent office proceedings, criminal courts, separate validity and infringement proceedings, mediation, arbitration, etc.
• How long for resolution? How expensive?
• Availability of and rules for discovery
• Technical competence of courts
• Historical level and direction of any court bias
• Political/judicial climate:
– neutral or pro- versus anti-patent
– neutral or pro- versus anti- foreign patentee
– ‘respect’ for patents
Enforcement of patents
Considerations
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• Others types of protection (data protection -- clinical trial data for pharma)
• Availability of patent term extensions (SPC)
• Ability to get acceptance by conforming claims to those granted in another country
• What do my investors/shareholders want?
• Useful for licensing purposes?
• Are there compulsory licenses?
• What will the country/market look like in 5, 10, 15 years
• Return on Investment
Miscellaneous
Questions to Ask
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• Where and how big are my present markets for the invention? Who is the
customer? Who is my competition? Where are my business partners located?
• Where will the product be manufactured? Where will product be used? Where would
my competition manufacture its product?
More Questions / Suggestions
• Where are there useful law enforcement mechanisms (for example, strong presence of customs
officers) that can block import of infringing products?
• How cost-effective is enforcement and what is likelihood of achieving positive enforcement results.
What will the enforcement/licensing potential look like in 10 years?
• Consider benefits other than enforcement/licensing. For example, to reduce corruption, many
countries preferentially treat parties with patented technology in contracts with state run entities.
• Look at your foreign filings like an investor. Consider filing in markets the investors are likely to value
(China).
• What are your emerging markets where future protection may become important.
• Where does your IP reside (literally) … where could an employee or partner walk out the door with
your know how and start competing with you?
• Where is your competition located – manufacturing and/or nerve centers?
• Consider major markets or strategic venues for enforcement, like shipping hubs or countries like
Germany where you can get quick relief.
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Potential Cost Savings• Implement a foreign filing plan for future filings
– Country set #1 for certain technologies vs. set #2 for other technologies
– Country set #1 for crown jewel assets vs. set # 2 for other assets
• Control translation costs
– Focus on countries which are English language jurisdictions; shop for pricing on translations
• Manage numbers of claims
– Many countries have their own excess claims fees; for many, these fees can be moderated by amendment at request for
exam stage. For others (CN, for example), the claim fees are based on number of claims in the PCT application
• Select search / examination authorities
– Discounts available in some instances but quality and speed remain critical issues
• Expedited processing
– Consider PPH
• Careful selection of foreign associates
– Quality is key; ask for best rates (and potentially for discounts regarding translations)
• Periodic review of patent portfolio
– Can you still make a business case for each filing?
• THE BIG PICTURE QUESTION – CAN YOU AFFORD (NOW AND DOWN THE ROAD) TO FILE OR NOT FILE IN
PARTICULAR COUNTRIES
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Where to File
Where to File (in Addition to US)?
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General, technology neutral strategy:
– EPO (almost always)
– Huge markets and economies (China, Japan, South Korea, and India)
– Large markets and economies (Brazil, Russia, Taiwan, and Mexico)
– “No translation required” markets (Canada, Australia, New Zealand, and South Africa)
– “Proximity to the US” markets (Canada and Mexico)
Technology Specific – Core Filings
• Software – EP, AU, CA, CN, IN, JP, KR
• Energy – EP, CA, CN, GCC/SA, MY, MX, NO, RU, UK
• Semiconductors/photonics – EP, AU, CA, CN, IL, JP, KR, TW
• Life sciences – EP, AU, BR, CA, CN, IN, JP, KR, MX, SG, TW
• Industrial chemicals – EP, AU, CA, CN, JP, KR
• Medical devices – EP, CN, CA, JP, AU, IL
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Filing in Non-PCT Countries
• Taiwan – expensive translations but patents typically enforceable
• Argentina –examination very slow, no real procedures for accelerating exam;
enforcement questionable
• Venezuela - examination very slow; enforcement questionable especially for US held
patents; BUT – cryptocurrency issues
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Where Not to File
Potential Issues -- Export Regulations (EAR and ITAR)
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See, for example, https://www.tradecompliance.pitt.edu/embargoed-and-sanctioned-countries
Requirements for Filing Licenses from
Other Countries Prior to Filing in the US
United States
• Particularly relevant US materials
– 35 U.S.C. 184: filing of application in foreign country
– 35 U.S.C. 185: patent barred for filing without license
– 37 CFR §5.11; license for filing in a foreign country an application on an invention made
in the United States or for transmitting an international application
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Countries with No Foreign Filing License Requirement
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• Algeria
• Argentina
• Australia
• Brazil
• Chile
• Colombia
• Hong Kong
• Indonesia
• Iran
• Japan
• Kazakhstan
• Kuwait
• Mexico
• New Zealand
• Nigeria
• Peru
• Philippines
• Qatar
• Saudi Arabia
• South Africa
• Switzerland
• Syria
• Taiwan
• Thailand
• United Arab Emirates
• Vietnam
• + many others
Countries with General Foreign Filing License Requirement
• China – license available; ISSUE – is there a Chinese inventor (individual or entity) if invention was made
in China?
• India – license available; ISSUE – did the invention originate in India or involve an inventor resident in
India?
• Malaysia – license available; ISSUE – is the inventor a Malaysian citizen or resident / is applicant a
Malaysian company?
• Poland - no license available – ISSUE – is the inventor a Polish resident?
• Russia – license available; ISSUE – was the invention made in Russia?
• Ukraine - no license available – ISSUE – is the inventor a Ukrainian citizen / is applicant a Ukrainian
company?
• Singapore – license available; ISSUE – was the inventor and/or applicant a Singaporean individual or
entity?
• Greece – no license available – ISSUE - was the inventor a Greek citizen?
• Portugal – no license available – ISSUE – is the applicant resident in or have its place of business in
Portugal?
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Countries with Limited Foreign Filing License Requirement
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• Belgium – FOCUS – “national defense or security”
• Germany – FOCUS – “state secrets”
• Denmark – FOCUS – “war materials or the manufacture of war materials”
• Finland – FOCUS – “inventions of Importance to the Defence of the Country”
• France – FOCUS – “sensitive inventions”
• Italy – FOCUS – “inventions useful for the defense of the country”
• Norway – FOCUS – “military technology or whose publication might prejudice national security”
• United Kingdom – FOCUS – “military technology or whose publication might prejudice national
security or safety of the public.”
• Sweden – FOCUS – “applications concerning defense inventions”
• Canada – FOCUS – “military applications”
• Israel – FOCUS- “applications the subject of which is weaponry or ammunition, or which is otherwise
of military value
• South Korea – FOCUS – “applications which may be of interest for national defense”
• Turkey – FOCUS – “made in Turkey and which are of importance for national security”
Takeaways
• Check inventor / applicant citizenship and residency well before first filing to give
yourself time to get a foreign filing license if necessary
• Violations can range from fines, invalidation of patents, up to criminal liability
(sanctions include imprisonment up to five years (Germany), seven years (Russia), or
fifteen years (France)
• The requirements are fact-specific; if in doubt reach out to a specialist for each
country.
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Please send your NY CLE forms or
questions about the webinar to Angela
Park at [email protected]
A replay of the webinar will be
available for viewing at
http://www.fr.com/webinars
Thank You!Gwilym Attwell
Principal
302-778-8458
