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

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

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

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

  • 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
    • Innovation, Intellectual Property and International Development
    • Managing Patent Information to advance Innovation: Global PCT Strategy
    • 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:
    • The Economic Incentive Regime
    • Innovation
    • Education
    • Information Infrastructure
    • The subcomponents for the economic incentive regime are:
    • Trade policy
    • Intellectual property protection regime
    • 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 Truisms Specific 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.
  • Determinants of innovation capability Human resources, tacit knowledge, and creativity Codified Knowledge R & D investments and facilities Entrepreneurial environment and incentives IPR legislation and regulations 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:
    • constitutes an important incentive to inventive and innovative activity.
    • creates an environment which facilitates the efficient development and utilization of patented inventions.
    • 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.
  • The PCT system 12 0 ~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 optionally File demand by month 22 International preliminary examination (months)
    • 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 Determining the 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 Determining the 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 Determining the 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 Strategically A 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 Reed Registered Patent Agent - U.S. & Canada U.S. Consultant on the PCT for WIPO 3506 Holly Ridge Drive Cincinnati, Ohio 45245-3042 US Phone: 513 752 6261 Cellular: 513 673 2303 Facsimile: 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:
    • Mining Patent Data
    • ITTI Clinic, first semester
    • ITTI Clinic, second semester
    • Students proceed from:
    • Fundamentals, to
    • Application, to
    • 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 Clinic
    • The 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 Clinic Insect Resistant Sweet Potato with CGIAR Codon optimized genes Codon Optimization Transformation Cry7Aa1, Cry3Ca1 & ET33-34 genes
  • ITTI Patent Landscape Clinic HIV 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 for Delaying Costs and Maximizing the Value of Your Intellectual Property Worldwide. In Intellectual Property Management in 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 Management in 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.