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Developing an International Perspective: Using the PCT Jay Erstling Director, Office of the PCT World Intellectual Property Organization (WIPO) Geneva,

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Presentation on theme: "Developing an International Perspective: Using the PCT Jay Erstling Director, Office of the PCT World Intellectual Property Organization (WIPO) Geneva,"— Presentation transcript:

1 Developing an International Perspective: Using the PCT Jay Erstling Director, Office of the PCT World Intellectual Property Organization (WIPO) Geneva, Switzerland

2 Overview Importance of an international patent strategy Role of the PCT

3 Importance of an international patent strategy Intellectual property = a valuable business asset Must be: –Planned for –Protected strategically –Managed effectively in order to be profitable

4 A successful international patent strategy will allow a company to: Steer R&D in worthwhile directions Acquire appropriate patent rights in the right countries Exploit and enforce patent rights effectively Manage costs

5 Goals Protect core technological advantage Secure R&D pipeline Reinforce products differentiating features –Build patent walls Control key methods and processes –minimize risk of being blocked Leverage product and technology platforms Balance benefits and costs

6 Why patent? To exclude competition and block copying To facilitate market entry To protect/expand market share To earn income –Profits from sales of products –Royalty income from licenses To raise money –Value of a good search report To serve as a negotiating tool in –Strategic alliances, joint ventures, cross licensing, sales of assets

7 Managing costs Patent wisely by: –Prioritizing inventions –Carefully selecting countries

8 A country-by-country balancing act Analyze and balance: –Cost and complexity of obtaining rights –Cost of patent maintenance –Ability to obtain and enforce patents –Strength of the rights available –State of the law Against: –Value of the invention –Size of the market –Competitive landscape

9 Role of the PCT

10 Traditional patent systems Local patent application followed within 12 months by foreign applications in all countries in which protection is sought: –multiple formality requirements –multiple translations –multiple national fees –multiple patent agents File applications abroad 12 0 File application locally

11 National phase (month) PCT filing Priority Publication Written Opinion of the ISA International Search Report International Preliminary Report on Patentability (IPRP ch.II) -established by IPEA- International Preliminary Report on Patentability (IPRP ch.I) -established by IB- Overview of the PCT procedure ch.II international preliminary examination ? 22 No Yes 28

12 Benefits of the PCT PCT provides time, defers costs, provides valuable information and preserves options: –One application –One Office –One language –An early effective filing date –An information-rich search of the prior art –An opportunity to amend the description and claims –18 additional months for patenting decisions –Easy entry into the national phase

13 Benefits of the PCT (continued) PCT: –Delays filing fees –Delays national attorney fees –Delays translation costs –Provides more time: For testing and technical development For marketing and commercialization For licensing and financing For finalizing selection of countries –Permits early evaluation of inventions –Facilitates reallocation of IP budget resources

14 PCT Growth

15 Country ranking

16 Ranking based on population

17 Top applicants Philips 2. Matsushita 3. Siemens 4. Nokia 5. Bosch 6. Intel 7. BASF 8. 3M 9. Motorola 10. DaimlerChrysler 11. Kodak 12. Honeywell 13. Ericsson 14. Samsung 15. Procter & Gamble 16. Sony 17. Mitsubishi 18. Dupont 19. Toyota 20. Thomson

18 Contracting States Non-stop growth: over one million applications Non-stop expansion: 132 Contracting States

19 PCT: One million applications and still counting Thank you


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