advancing global innovation: the role of pct practice and strategy

Advancing Global Innovation via Education, Capacity Building and Intellectual Property Management, Exemplified by PCT Practice and Strategy

Stanley P. Kowalski, J.D., Ph.D., Director, International Technology Transfer Institute (ITTI), Franklin Pierce Law Center (FPLC), Concord, New Hampshire, U.S.A.

Presentation Overview

1) Innovation, Intellectual Property and International Development

2) Managing Patent Information to advance Innovation: Global PCT Strategy

3) FPLC ITTI: Instructional Programs in Patent Searching and Landscape Analysis

Intellectual Property, Innovation and International Development

Innovation: the successful introduction of something new and useful, for example introducing new methods, techniques, or practices or new or altered products and services.

Invention and Innovation Distinguished Invention is the first occurrence of an idea for a new product or process and its reduction to practice, while innovation is when it is put to use and causes has social or commercial impact … the successful implementation of creative ideas (i.e., inventions).

Performance of national economies is closely linked to investments in knowledge, and that country competitiveness will be increasingly knowledge driven. This consists of four components:

1. The Economic Incentive Regime2. Innovation3. Education4. Information InfrastructureThe subcomponents for the economic incentive regime

are:1. Trade policy2. Intellectual property protection regime3. Government regulation

In a globalizing economy, competitiveness can only be maintained by…….

CONTINUOUS INNOVATION.

Or, in other words:

Technology stasis leads to economic stagnation

Technology progress leads to economic growth

Innovation TruismsSpecific factors that influence innovation are the relationships between universities, financial institutions, governmental offices and industry networks among others.National innovation support structures and programs for services should be seen as a unified whole, with the main objective of increasing the capacity of society to generate inventions and innovations, including the transfer of technology, both nationally and internationally.

Knowledge is a key driver of global innovation and economic growth. Knowledge is distilled information.

Access to information drives innovation.

Human resources, tacit knowledge, and creativity

CodifiedKnowledge

R & D investments and facilities

Entrepreneurial environment and incentives

IPR legislation and regulations

Innovation capability

Determinants of innovation capability

There are three main, interrelated economic effects of IP protection:

1. Incentivizes creation new knowledge and information;2. Drives diffusion of knowledge and information within and across economies;3. Facilitates market structure and prices and the distributive consequences.

The patent system contributes to the stimulation of innovation in three main ways:

1. constitutes an important incentive to inventive and innovative activity.

2. creates an environment which facilitates the efficient development and utilization of patented inventions.

3. provides the framework for the collection, classification and dissemination of the richest store of technological information existing in the world today.

Managing Patent Information to advance Innovation: Global PCT Strategy

Patent Cooperation Treaty [PCT] A multilateral treaty that became effective in 1978 and is administered by the World Intellectual Property Organization (WIPO). The treaty is an option that facilitates the filing of parallel patent applications on the same invention in several nations. The PCT provides for the filing and processing of a patent application in one of the many “receiving offices” during the “international phase” of the patent application.

The PCT neither creates an “international patent” nor changes the substantive requirements of patentability in the United States or in any other PCT nation.

120 ~16 18

30

30

File local application

File PCT application

International search

report and written

opinion of the ISA

Enter national phase

Enter national phase

International publication

Chapter I

Chapter II

or optionallyFile demandby month 22

International preliminary examination

(months)

The PCT system

Local patent application followed within 12 months by international application under the PCT, claiming Paris Convention priority, with “national phase” commencing at 30 months*:

– one set of formality requirements– international search– international publication– international preliminary examination– international application can be put in order before

national phase– translations and national fees required at 30 months*,

and only if applicant wishes to proceed

The PCT system

Where Should I Seek Patent Protection

Commercial Need for Exclusivity

Initial and Long-Term Cost

Quality of IP Protection & Enforcement

Return on Investment

The Business/Commercial Need for Exclusivity

The single most important consideration in deciding where to file is the business need for exclusivity in the country under consideration.

The Business/Commercial Need for Exclusivity

Any place you file should provide an adequate return on the money invested

in IP protection.

Any place you don’t file, you will have no claim to exclusivity.

Some Questions to Consider in Determiningthe Business/Commercial Need for Exclusivity

Where will the claimed product be manufactured or the claimed process used? Where does the competition manufacture its products?

How easy (or difficult) would it be for competition to design around the claimed invention? How long and what resources would it take?

Some Questions to Consider in Determiningthe Business/Commercial Need for Exclusivity

How easy (or difficult) would it be for a third party to copy the invention? Is there an incentive to copy your invention in “unprotected” countries?

How costly would it be for a third party to copy and market the invention?

What is the smallest market size that would economically justify a third party copying the invention?

Some Questions to Consider in Determiningthe Business/Commercial Need for Exclusivity

Is the invention on-point with your marketing strategy or is it defensive?

What are the consequences to your business if the invention is copied in some/all countries?

By geographic area, what is more important, exclusivity, freedom-to-practice or both?

Use of PCT Strategically

•The published PCT application serves as an

advertisement for prospective partners.

•The PCT application provides an early assessment of the patentability of the invention and can suggest how the application might be strengthened before being submitted to individual patent offices.

Use of PCT Strategically

How big is the market for your invention in a particular country?How big is the market for your invention in a particular region?Where are the major manufacturing centers for you and for your competitors?Where are the emerging markets?

Use of PCT Strategically

What is the status of a patent application in the foreign country of interest?Would your invention be considered novel in your country of interest?Where are your competitors filling their patent applications?Are there trade secrets in your application?

Use of PCT StrategicallyA global patent filling program is an essential component of an integrated system of IP management. It maximizes value and protects the integrity of an organization’s patent portfolio. Such a program requires knowledge, organization, and planning. The dynamics of the international patent landscape must be understood (for example, issues relating to establishing foreign priority, where to file patent applications, and the advantages and disadvantages of the various filling options).

PCT Materials Courtesy of

T. David ReedRegistered Patent Agent - U.S. & Canada

U.S. Consultant on the PCT for WIPO

3506 Holly Ridge DriveCincinnati, Ohio 45245-3042US

Phone: 513 752 6261 Cellular: 513 673 2303Facsimile: 513 752 6281

Website: www.TDRPatents.com E-mail: David@TDRPatents.com

The Franklin Pierce Law Center: Practice-Based Program in Patent Database Mining and Patent Information Management

Pierce is a “Law Center”

• Law school J.D. & LL.M.• Interdisciplinary MIP & DIP

– Non-lawyer professionals from industry and government

– Global perspective: many students from developing countries

• Institutes and Programs • International Tech Transfer Institute• Kenneth J. Germeshausen Center for the Law of

Innovation and Entrepreneurship

Patent Searching Curriculum: from novice to mastery:

• Mining Patent Data in the New Millennium• ITTI Patent Landscape Basic Clinic

Patent Searching Curriculum

Comprehensive, full year program:1. Mining Patent Data2. ITTI Clinic, first semester3. ITTI Clinic, second semesterStudents proceed from: 1. Fundamentals, to2. Application, to

3. Leadership and management roles.

Mining Patent Data: Stepwise Instruction

• Themes• World patent documents and World Patent Index• Bootcamp: class and keywords: 7 Step Strategy• Hybrid searching• Familiar platforms: Lexis & Westlaw• Project based platforms• Power searching strategies• Presentation & analytics options

Patent Analytics

ITTI Patent Landscape Clinic

ITTI Patent Landscape ClinicThe International Technology Transfer Institute (ITTI)• Capacity building resource at the Franklin Pierce Law Center• Mission: to advance innovation in developing countries

• Think-tank for analyzing policy, strategy and options for implementing accelerated international development.

• Foster human and institutional capabilities in IP management, technology transfer and knowledge resource access.

• Research and teaching related to patent information management, with particular focus on innovations in health and agriculture for developing countries: ITTI Patent Landscape Clinic

ITTI Patent Landscape Clinic

Practical application of principles learned in Mining Patent Data in the New Millennium:• Application of the iterative approach to patent data mining• Hybrid search strategies used to mine data bases• Cross referencing of non-patent scientific literature to define and narrow field of search• Value added each semester: research and teaching build capacity.

Spring 2009 ITTI Team

ITTI Patent Landscape Clinic

Topics are directly related to real world challenges in Health and Agricultural Innovation Management.

Patent Landscapes for technologies with direct applicability to advancing the public interest in developing countries.

ITTI Patent Landscape ClinicInsect Resistant Sweet Potato with CGIAR

Codon optimized genes

Codon Optimization

Transformation

Cry7Aa1, Cry3Ca1 & ET33-34 genes

ITTI Patent Landscape ClinicHIV Project with UC Davis (PIPRA)

ITTI Patent Landscape Clinic

Analytics now used:

Delphion

MicroPatent

Patent INSIGHT Pro

Aureka ThemeScape

Excel

ITTI Patent Landscape Clinic

HIV DNA Vaccine Patents Assignees

ITTI Patent Landscape Clinic

HIV DNA Vaccine Patents Assignees

ITTI Patent Landscape Clinic

HIV Adenoviral Vaccine Patent Applic. Filing Trend (PIP)

ITTI Patent Landscape Clinic

HIV Adenoviral Patent Assignee, Manual Count

ITTI Patent Landscape Clinic: HIV DNA Vaccine Patent Landscape: Top 6 Assignees

ITTI Patent Landscape Clinic: HIV DNA Vaccine Patent Landscape: Aureka ThemeMap

ITTI Patent Landscape Clinic: Semester Work Product Report

Patent Searching Curriculum:

Unique Comprehensive

Focused Practice-based

Thank you …. Q&A

References used in preparation of this presentation included:McCarthy’s Desk Encyclopedia of Intellectual Property, Third Edition; J. Thomas McCarthy, Roger E. Schechter, and David J. Franklyn (2004) p. 437.

Schneiderman AM. 2007. Filing International Patent Applications under the Patent Cooperation Treaty (PCT): Strategies forDelaying Costs and Maximizing the Value of Your Intellectual Property Worldwide. In Intellectual Property Managementin Health and Agricultural Innovation: A Handbook of Best Practices (eds. A Krattiger, RT Mahoney, L Nelsen, et al.). MIHR: Oxford, U.K., and PIPRA: Davis, U.S.A. Available online at www.ipHandbook.org.

Viksnins AS and AM McCrackin. 2007. A Guide to International Patent Protection. In Intellectual Property Managementin Health and Agricultural Innovation: A Handbook of Best Practices (eds. A Krattiger, RT Mahoney, L Nelsen, et al.). MIHR:Oxford, U.K., and PIPRA: Davis, U.S.A. Available online at www.ipHandbook.org.

RJW Tijssen (2004), Handbook of Quantitative Science and Technology Research, pp. 695-715

A Driouchi, et al. (2006), Journal of Tech-transfer, 31, 241-255.