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

Cost-Effective International Patenting Strategies: Expand Your Global Opportunity Presented by Jeff Sweetman, Head of Professional Services, inovia August 5, 2010 Agenda 1.Foreign filing overview 2.Foreign filing best practices 7 rules for reducing foreign filing costs U.S. IP Trends Report highlights inovia’s Foreign Filing Platform2

Foreign Filing Overview

Foreign Filing Overview: Two approaches inovia’s Foreign Filing Platform4

Foreign Filing Overview: Data from inovia’s 2010 U.S. IP Trends Report inovia’s Foreign Filing Platform5

Foreign Filing Overview: Pursuing global patent protection through the PCT process inovia’s Foreign Filing Platform6 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.

Foreign Filing Overview: Pursuing global patent protection through the PCT process inovia’s Foreign Filing Platform7 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).

Foreign Filing Overview: Pursuing global patent protection through the PCT process inovia’s Foreign Filing Platform8

Foreign Filing Overview: The importance of your patent translation inovia’s Foreign Filing Platform9 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.

Foreign Filing Overview: Pursuing global patent protection through the PCT process inovia’s Foreign Filing Platform10 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.

Foreign Filing Overview: European validation inovia’s Foreign Filing Platform11 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.

Foreign Filing Overview: European validation inovia’s Foreign Filing Platform12

Foreign Filing Overview: European validation inovia’s Foreign Filing Platform13 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).

Foreign Filing Overview: PCT vs. Paris filing inovia’s Foreign Filing Platform14

Foreign Filing Best Practices

inovia’s Foreign Filing Platform16 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!

Foreign Filing Overview: The seven rules for reducing foreign filing costs inovia’s Foreign Filing Platform17 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.

Foreign Filing Overview: The seven rules for reducing foreign filing costs inovia’s Foreign Filing Platform18 Rule 2: Select countries intelligently. Consider the “BRIC” countries (Brazil, Russia, India, China).

Filing into the BRIC countries Data from inovia’s 2010 U.S. IP Trends Report inovia’s Foreign Filing Platform19

Foreign Filing Overview: The seven rules for reducing foreign filing costs inovia’s Foreign Filing Platform20 Rule 3: Ace the patent application process. Carefully review the application to avoid late & additional claim fees.

Foreign Filing Overview: The seven rules for reducing foreign filing costs inovia’s Foreign Filing Platform21 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.

Foreign Filing Overview: The seven rules for reducing foreign filing costs inovia’s Foreign Filing Platform22 Rule 5: Batch file to create economies of scale. Instructing a large number of cases simultaneously can also save you time and money.

Foreign Filing Overview: The seven rules for reducing foreign filing costs inovia’s Foreign Filing Platform23 Rule 6: Consolidate providers. This will increase buying power and lower your rates!

Foreign Filing Overview: The seven rules for reducing foreign filing costs inovia’s Foreign Filing Platform24 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.

2010 U.S. IP Trends Report

An in-depth look at the foreign filing strategies of U.S. patentees inovia’s Foreign Filing Platform26 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.

2010 U.S. IP Trends Report Financial pressures inovia’s Foreign Filing Platform27

2010 U.S. IP Trends Report Foreign filing statistics inovia’s Foreign Filing Platform28

2010 U.S. IP Trends Report Foreign filing statistics inovia’s Foreign Filing Platform29

2010 U.S. IP Trends Report Financial pressures inovia’s Foreign Filing Platform30

2010 U.S. IP Trends Report Workflow and cost containment inovia’s Foreign Filing Platform31

2010 U.S. IP Trends Report Workflow and cost containment inovia’s Foreign Filing Platform32

2010 U.S. IP Trends Report Cutting foreign patenting costs inovia’s Foreign Filing Platform33

U.S. IP Trends University Survey inovia’s Foreign Filing Platform34 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.

U.S. IP Trends University Survey inovia’s Foreign Filing Platform35 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.”

Survey Download inovia’s Foreign Filing Platform36 To download your copy of the 6-page report, visit: inoviaip.com/TTT

For more best practices and tips on foreign filing strategy and execution, please: inovia’s Foreign Filing Platform37 Visit our website at inoviaip.com Subscribe to our blog at info.inoviaip.com Follow us on Thank You Presented by Jeff Sweetman Head of Professional Services m New York | Sydney | London | Tokyo | Online |