Patent Management
It is of paramount importance that innovative companies and their IP teams’ device some strategies, in order to keep their patenting budget under control. The big innovative companies usually wish to obtain patents in every country of the world, but this dream is beyond budget for most such companies, seeing the costs involved. This is the precise reason behind the need to develop effective working strategies to minimize the costs of patenting to the maximum extent possible. The strategies should be devised in a way that not only the initial patent filing costs can be controlled but the costs through the 20 yr life cycle of a patent can be supervised.
By making use of some or all of the strategies given below effective patenting strategies can be devised.
1. Country for patent filing: There is no such thing as an ‘International Patent’ or a ‘World Patent,’ no single patent filing can protect an invention idea in all countries on earth. To get the patent protection in individual countries, one needs to ultimately file for a patent in that particular country. There are approx 200 countries in the world and obtaining individual patents in each of these countries means huge unbearable costs. The market assessment of product potential, growth of technology over the life of a patent, location of manufacturing centers, competitors and their filing strategy, nature of invention and enforceability of patents are some key points of consideration while determining this. Also, different jurisdictions define differently what may or may not be patented. The patentability of software, business methods, genetic material, stem cells etc are some of the prominent areas that vary across jurisdictions and must be taken into consideration while taking such decisions.
2. Variation in fee across jurisdictions: The fee varies in various jurisdictions. The fee is basically impacted by claims in most jurisdictions. For example:
i) In the US the filing fee goes up when an application contains more than 20 claims and more than three independent claims.
ii) In Russian Federation, the fee for requesting an examination depends on total number of independent claims in an application.
iii) In Japan and Republic of Korea the fee for requesting an examination and the renewal fee are determined by total number of claims in an application.
iv) Renewal fee in Indonesia is determined on the basis of total number of claims.
v) Filing fee in India changes after 10 claims.
vi) Renewal fee in Vietnam is calculated according to the number of independent claims.
3. E-filing services: Australia, Brazil, India, Japan, Malaysia, the Republic of Korea and the EPO offer e-filing services at reduced rates. These countries prefer e-filing in an effort to improve their carbon footprint, cut costs and improve efficiency.
4. Translation costs: Translation costs usually come in picture in following three cases:
i) When a patent application is filed or prosecuted in such jurisdictions where English is not an official language; or
ii) At the time of the grant of a European Patent; or
iii) When validating a granted European patent in certain EPO member states.
iv) Translation costs can be managed or reduced by focusing on jurisdictions with English language.
5. PCT: Patent Co-operation Treaty (PCT) enables to file one international patent application, which is accepted by 150 countries throughout the world.PCT application can be used as a tool of reservation for submitting patent to specified countries and grants a period of two and a half years to decide which countries to actually file in. This period can be used for studying the commercial viability of the invention in the target markets. Also PCT filing gives the advantage of mandatory International Search report (ISR) and an optional International Preliminary Examination Report (IPER) which aids the applicants to make informed decisions with respect to their patenting strategy.
6. Choice of Search and Examining Authorities: When an application under the PCT is filed, selecting an International Searching Authority (ISA) to undertake prior art search for determining novelty and inventiveness is also supposed to be selected. 22 patent offices operate as ISA’s and India is also one of them. ISA is selected on the basis of jurisdiction in which the applicant first filed the application. The speed with which different ISAs generate reports and their quality is also taken into consideration while selecting appropriate ISA.
7. Expedited Processing: Several national patent offices collaborate through Patent Prosecution Highway (PPH) to streamline and expedite the processing of patent application. PPH arrangements effectively allow each of the participating national IP offices to benefit from work already done by another patent office on a given patent application. The ASEAN Patent Examination Co-operation (ASPEC) offers another type of work-sharing agreement. It includes the patent offices of Brunei Darussalam, Cambodia, Indonesia, the Lao People’s Democratic Republic, Malaysia, Singapore, Thailand, the Philippines and Vietnam.
8. Filing request for Examination along with the application: It is always advisable unless additional time is required. It saves both time and money of the applicant.
9. Modified Substantive Examination Option: In this option, an IP office grants a patent if it corresponds to one granted in another jurisdiction. This can lead to substantial savings in prosecution costs.
10. Keep supporting documentation in order: Supporting documents like assignment deeds and certified priority documents if kept handy help in avoiding delays.
11. Licensing rights to reduce maintenance fees: Applicants can benefit from discounted maintenance fee in around 20 countries if they declare their intention to license their patent to a willing third party. These countries include Belarus, Brazil, the Czech Republic, Germany, Ireland, Italy, Lithuania, Latvia, Slovakia, Spain, the Russian Federation, and the UK.
12. Strategic Abandonment: It can lead to substantial savings in maintenance fee payable throughout the patent’s life. This may occur when a protected technology becomes outdated or obsolete or no longer supports a company’s business goals. This kind of abandonment is used by companies like Samsung, Fujifilm, Toshiba, IBM etc.
It is very important to develop cost-effective IP maintenance strategies so that the business goals of the company are supported.
