Best Practices in IP 2013: a conference report 3

The third session of today's conference, moderated by Daniella Atzmony (In House IP Managers Forum) on Best Practices in IP focused on various aspects of costs. Daniella handled this session by making it a communal Q and A one:

Q: Given a limited budget, where would you file? 
Elisabeth Greiner and Rainer Friedrich (df-mp, Munich) explained how the classical European patent, covering 40 countries, was giving way to a new scheme which offered a choice of routes, including the unitary patent which had substantially less geographical coverage. Translation costs for the new system would certainly be lower, except in the event of litigation in countries for which no translation had previously been made available.  Much will depend on the level of renewal fees, it being reckoned that if a patent is sought for five or more EU states, excluding Italy and Spain, it would probably be cheaper to go for the new unitary option.

Patent attorney Gregory Scott Smith (Smith Risley Tempel Santos, USA) had several pieces of advice about the US. (i) provisional filings are still alive and well -- they are an inexpensive way of protecting priority and minimising cost -- and start-ups have an 'extended provisional' if they file a provisional as a non-provisional, making sure there's a claim in it, and pay their $70; (ii) priority filings, for just $2,000 for small entities, will give you a yes-or-no in just five months; (iii) don't file multiple dependent claims.

Justin Davidson (Norton Rose) then answered the question regarding the Far East, a regional which he divided into three jurisdiction: established (Hong Kong, Japan, Singapore, South Korea and Taiwan), fast-developing (China, Malaysia) and work-in-progress (India, Indonesia, Philippines, Thailand and Vietnam). Following a statistical breakdown of filings in the area, Justin estimated that China had travelled "a hell of a long way" but was "not quite there yet". Damages for patent infringement are still very low and the elephant in the room is corruption -- though the Zhejiang Anti Graft Brochure has been issued to some members of the judiciary in order to remedy things.

Micaela Modiano (Modiano & Partners) then gave some tips on keeping patent costs down. She reviewed the theory and practice of the Patent Prosecution Highway (PPH), which works well in a best-case scenario but is apparently unpopular with the European Patent Office, where examiners have indicated that the work of examiners in other patent-granting offices is more often than not non-useful. Some areas of technology are often difficult to patent whether the PPH is contemplated or not: Micaela cited business methods. software inventions and surgical/diagnostic methods in this context.

Brenda Matanga (BMatanga IP Attorneys, Zimbabwe), opening with a disclaimer that she was being paid neither by OAPI nor by ARIPO, advocated patented in Africa as a way of capitalising on unexploited business opportunities. She gave a very positive account of the mechanics of patent filing in those two systems -- though she confessed herself puzzled (as is this Kat) as to why Nigeria and South Africa have continued to hdld themselves outside ARIPO.

Q. What are the specific dos and don'ts for your jurisdiction?
Elisabeth Greiner and Rainer Friedrich counselled against making amendments to a patent's claims. The European Patent Office has found some 50% of amendments to be inadmissible, a particular problem being added subject matter. Also, avoid lists and select your preferred embodiments. Finally, watch out for "propheti"c applications, if there is a lack of plausibility of the invention at the date of filing.

Aaron Hurwitz (Kangxin Partners Beijing) then addressed the position in China. Regarding utility model filings, statistics have reached epic proportions. Almost all are filed by the Chinese, not by foreigners, despite their usefulness and their low cost. Grant is achieved in a year, and you can file for both a 'real' patent and a utility model simultaneously.  Aaron then mentioned enforcement: the past five years have seen real improvement, despite the war stories. The domestic market for IP protection is now significant, which has advantages for foreign IP owners too.