Risk management for foreign patenting
It is known that foreign patenting of inventions is not cheap. The cost of patenting one invention in 30–40 countries (typical target market for a hi-tech product of the B2B or B2C sector) and maintaining the patent in force for the first ten years is approximately $ 200–300 thousand. Considering that the young high-tech patent portfolio Companies usually contain from three to ten patents and patent applications, the total cost of patenting is most often in the range of $ 1-2 million. Such large sums require special attention.
One of the past publications has been devoted to optimizing the foreign patenting route, which allows you to choose between economy and flexibility in making decisions on certain countries, as well as take into account the preferred schedule for financing the patenting program.
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Today, the focus is on the issue of adequate risk management, consisting in the fact that the purpose of patenting - ensuring the legal protection of an invention in target markets - will not be achieved at all costs incurred. In patenting, the principles of classical risk management are fully applicable, but for their effective application one should know the specific tools of risk management in foreign patenting.
A brief historical background on foreign patenting
The age of the patent system (in its current sense) in most industrialized countries is approximately 200 to 400 years. But a century and a half ago, the patenting of inventions in foreign countries was fraught with enormous costs and difficulties, since patent applications had to be submitted simultaneously in all countries of interest and at the same time take into account the requirements of national laws, which were largely different and even contradictory. This required hiring lawyers to conduct business and pay duties simultaneously in all these countries, and this often had to be done long before the prospects for monetization of the invention became clear. Difficulties of foreign patenting restrained the spread of progressive technologies and major industrialists intensively lobbied for the emergence of international patent procedures.
The first significant success in this direction was the adoption in 1883 of the Paris Convention for the Protection of Industrial Property. The countries participating in the convention pledged to provide citizens of other participating countries with the same patent protection as their own citizens. In addition, on the basis of the first application filed in one country party to the convention, within a certain period of time it became possible to file applications in all other country parties while maintaining the priority of the first application. This significantly simplified overseas patenting, since much more time was allotted for submission of applications in other countries (6 or 12 months), which made it possible to make the necessary preparations without haste and to distribute expenses over time. The convention system is still in effect, bringing together 175 states, the priority period for inventions is 12 months.
The development of the Convention system was the conclusion in 1970 and the entry into force in 1978 of the Patent Cooperation Treaty (PCT). The PCT provides an opportunity to citizens of the countries parties to the treaty by filing one international application in one country in one language to ensure the possibility of subsequent filing within 20 or 30 months of applications in all other participating countries while maintaining the priority of the first application. In addition, a formal examination and an international search are carried out in respect of only this one international application, it is also possible that an international preliminary examination is conducted. The international application is centrally published and distributed by default to the patent offices of all the PCT member states (148 to date). These actions are called the international phase of the international application. The results of the international search and the international preliminary examination are to some extent taken into account in the future when examining applications during the national phase - in national patent offices, in any case, they can reduce the amount of fees in most countries. As a result, the unit cost of foreign patenting under the PCT system has decreased by approximately half compared with the conventional system.
The next step in optimizing international patenting was the creation of regional patent systems, primarily European (based on the 1973 European Patent Convention, which entered into force in 1977) and the Eurasian (based on the 1994 Eurasian Patent Convention, which came into effect 1995). Regional systems can further reduce the unit cost of patents when patenting in a large number of countries in these regions.
The first significant success in this direction was the adoption in 1883 of the Paris Convention for the Protection of Industrial Property. The countries participating in the convention pledged to provide citizens of other participating countries with the same patent protection as their own citizens. In addition, on the basis of the first application filed in one country party to the convention, within a certain period of time it became possible to file applications in all other country parties while maintaining the priority of the first application. This significantly simplified overseas patenting, since much more time was allotted for submission of applications in other countries (6 or 12 months), which made it possible to make the necessary preparations without haste and to distribute expenses over time. The convention system is still in effect, bringing together 175 states, the priority period for inventions is 12 months.
The development of the Convention system was the conclusion in 1970 and the entry into force in 1978 of the Patent Cooperation Treaty (PCT). The PCT provides an opportunity to citizens of the countries parties to the treaty by filing one international application in one country in one language to ensure the possibility of subsequent filing within 20 or 30 months of applications in all other participating countries while maintaining the priority of the first application. In addition, a formal examination and an international search are carried out in respect of only this one international application, it is also possible that an international preliminary examination is conducted. The international application is centrally published and distributed by default to the patent offices of all the PCT member states (148 to date). These actions are called the international phase of the international application. The results of the international search and the international preliminary examination are to some extent taken into account in the future when examining applications during the national phase - in national patent offices, in any case, they can reduce the amount of fees in most countries. As a result, the unit cost of foreign patenting under the PCT system has decreased by approximately half compared with the conventional system.
The next step in optimizing international patenting was the creation of regional patent systems, primarily European (based on the 1973 European Patent Convention, which entered into force in 1977) and the Eurasian (based on the 1994 Eurasian Patent Convention, which came into effect 1995). Regional systems can further reduce the unit cost of patents when patenting in a large number of countries in these regions.
Risk management tools for foreign patenting
Patent search and analysis at the stage of preparation of a patent application
Patent search and analysis conducted at the stage of preparation of a patent application, allows to assess the patentability of technical solutions proposed for patenting. An assessment of patentability at an early stage (even before the application is drafted) allows (a) to exclude deliberately unpatentable solutions from the patenting program and (b) to identify areas of refinement of conditionally patentable solutions to increase the chances of obtaining patents and ensure the sustainability of future patents for revocation. Drawing up patent landscapes and profiles gives a general patent picture on the industry or on specific persons - partners, competitors, etc. Patent SWOT analysis is the most valuable source of information for making strategic decisions in the face of uncertainty.
The use of collective routes of international patenting to reduce the unit cost of patenting
Such routes do not directly affect the magnitude of the risks of refusing to grant a patent, but by reducing the unit cost of patenting, the cost of risk can be reduced, i.e. losses in case of a risk event.
Using international search results
An international PCT search allows the applicant to assess the chances of obtaining a patent prior to the transfer of the international application to the national phase in various countries. If it is clear from the international search report that these chances are small, the national phase in some or all countries can be abandoned, thus eliminating unproductive spending. In addition, according to the results of the international search, it is possible to change the claims of the international application once before transferring it to the national phase (within the established limits, of course).
Using additional international search results
The PCT procedure provides for the possibility of conducting one or more additional international searches. This allows the applicant to more accurately assess the chances of obtaining a patent in a particular country, since the additional search expands the language and technical scope of the search. For example, for a Russian applicant it is possible to conduct a basic international search for an application in Russian by Rospatent (this is cheaper), and then, if necessary, also conduct an additional search for translating the application into English - this time by the European Patent Office (this more expensive, but EPO’s international authority is higher).
Use of international preliminary examination report
In addition to international searches, the applicant may initiate an international preliminary examination. The international preliminary examination conclusion is advisory in nature, however, if the patent office of the country in which it is expected to enter the national phase is chosen as the body conducting such preliminary examination, then in the event of a positive preliminary examination opinion, obtaining a patent in such a country is guaranteed by 99% . For example, the choice of an EPO as an international preliminary examination authority ensures that the invention is patentable in Europe at a lower price than when submitting a European application, and in the case of a negative preliminary examination opinion, make changes to the description, drawings and claims (also within the established limits) before the transfer of the international application to the national phase.
Selection of national representatives / agents
Competent choice of agents in the national phase can significantly reduce the risk of refusal to grant patents in controversial cases, since the qualifications and personal qualities of the agent significantly affect the persuasiveness of arguments in the course of a dispute with expertise. You should not choose, for example, such an agent . About how to choose an agent, there is a little here .
Consultants
Foreign agents most often work in the “mailbox” mode, i.e. simply forward to the applicant requests and notifications of patent offices. For answers to requests, it makes sense to seek help from patenting specialists, even if it seems to you that you understand the essence of the request well and you have something to answer. When preparing answers, you should consider the situation a couple of moves ahead so as not to harm yourself. Requests and responses to them are written in a special office, taking into account the written and unwritten rules determined by the established practice. Words in them may have a different meaning than in everyday life (and this is true for all languages). In addition, the expert's opinion expressed in the request may not coincide with his point of view (this is a joke with a bit of a joke) and you need to be able to see this.
Support by the inventors
For the preparation of responses to inquiries and notifications of patent offices it is useful to enlist the support of the authors of the invention, even if they do not already work in the applicant company. To do this, it is reasonable to make the relevant provisions in the agreement on the remuneration of authors. Well, in the case of parting to keep in mind that these people you may still need.
Monitoring the timing of legally significant actions during patenting
Missing deadlines is perhaps the worst thing that can happen during patenting. If the missed deadline is not recoverable, the application is considered withdrawn and costs are thrown to the wind. In addition, if a previously published application is deemed to have been withdrawn, it can be opposed to a newly submitted similar application. Therefore, it would be reasonable to schedule patenting with control points and periodically check its implementation. It is worth doing it, even if you use the services of an agent. In our country, the activity of patent agents (attorneys) is not insured. Obtaining damages / lost profits through the courts is almost impossible even if there is an agent’s fault. I also did not hear anyone get a refund from a foreign agent. In practice, the agent risks only reputation.
Claim Conversion
In certain cases, with an unfavorable forecast of the outcome of the examination, it is possible to “save” the application by transforming it into another type. For example, in a number of countries, including Russia, it is possible to convert an application for an invention that does not meet the condition of an inventive step into an application for a utility model and almost guaranteed to receive a patent. Sometimes an application for an invention may be converted into an application for an industrial design, although this is already exotic.
Highlighted applications
Another variant of the “salvation” of a problem application is the use of the mechanism of separated applications. For example, if the conversion of an application for an invention into an application for a utility model is no longer possible, then within a certain period there is still the possibility of submitting a dedicated application for a utility model with good chances of obtaining a patent.
Continuing and partially-continuing applications
These special types of applications that are specific to the United States make it possible to squeeze the maximum benefit out of the patenting process, even in the case of unpatentable solutions. In particular, the use of the mechanism of continuing and partially-continuing applications allows you to modify and supplement applications, as well as constantly keep ready “underwater” applications that are invisible to competitors.
PPH application
The use of PPH procedures (Patent Prosecution Highway) allows, after receiving a positive examination decision in one PPH member country, to speed up the consideration of the application and somewhat increase the chances of obtaining a patent in another PPH member country.
In general, patenting, no less than, say, engineering or marketing, deserves strategic planning and tactical management. The use of scientific management, in particular, tools of patent risk management, allows you to get the most out of the considerable costs incurred by the applicant in the case of foreign patenting.
Source: https://habr.com/ru/post/232175/
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