India's place in the patent world. International patenting basics. Patent Cooperation Treaty (PCT) overview. Patent Prosecution Highway (PPH) benefits.

1. June 21, 20181
India’s place in the patent world
International patenting basics
Patent Cooperation Treaty (PCT) overview
Patent Prosecution Highway (PPH) benefits
International Patenting:
Paris Convention,Patent Cooperation Treaty,
and Patent Prosecution Highway
Jay Erstling
September 15, 2017

2. SM
© 2017 Patterson Thuente Pedersen, P.A., some rights reserved - www.ptslaw.com
DISCLAIMER: This presentation and any information contained herein is intended for informational purposes only and should not be construed as legal
advice. Seek competent legal counsel for advice on any legal matter.
International Patenting:
Paris Convention, Patent
Cooperation Treaty, and Patent
Prosecution Highway
Jay Erstling
Hyderabad
September 2017

3. Road Map
India’s place in the patent world
International patenting basics
Patent Cooperation Treaty (PCT) overview
Patent Prosecution Highway (PPH) benefits
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4. India’s Place in the Patent World
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Patent applications for the top 20 offices, 2015
Source: WIPO Statistics Database, 2017

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India’s Place in the Patent World
Patent grants for the top 20 offices, 2015
Source: WIPO Statistics Database, 2017

6. Why is International Patenting Important?
If you intend to...
Market your invention abroad
Manufacture your invention abroad
Seek foreign investment for your invention
License or assign your invention abroad
...foreign patent protection is right for you
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7. Purpose for obtaining the patent
Strategic value of the invention
Place[s] where the invention will be manufactured or used
Market for the invention: How large and where is it located
Is there a geographic area/region that is most critical
What is each country’s potential market share
The competition: who and where are they located
Ease or difficulty to design around the invention
Ease with which the invention can be copied
Expected commercial viability of the invention
Size of the patenting budget
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Factors to Consider

8. How to File Internationally
Two ways to file internationally
Direct national filing via the Paris Convention for the Protection of
Industrial Property
• Indian “priority” application  foreign applications filed within the
following 12 months
International filing via the Patent Cooperation Treaty (PCT)
• Single international application with effect in 152 countries
• 233,000 PCT applications filed in 2016 by 50,838 applicants
• Asian region accounted for 47% of all PCT applications filed in 2016
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9. Non-Resident Applications by Filing Route
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Source: WIPO Statistics Database, 2017

10. Overview of the PCT System
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Source: WIPO

11. India’s Use of the PCT
PCT Applications Originating from India (2016): 1,529
1,412 in 2015
Worldwide PCT filings (2016): 233,000
India is the 19th largest filer of PCT applications worldwide
National Phase Entries Originating from India (2015): 3,590
3,681 in 2014
National Phase Entries Received at the Indian Patent Office: 27,882
26,340 in 2014
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12. The Indian Patent Office is an International Searching Authority (ISA)
Appointed 1 January 2008; began functioning 15 October 2013
In 2016, it issued 890 International Search Reports
• An increase of 52.7% over 2015
CSIR is a major filer of PCT applications
In 2016, CSIR ranked 8th in PCT filings among government and public
research organizations worldwide.
109 applications in 2016 (110 in 2053)
194th largest filer overall
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India’s Use of the PCT

13. The PCT has multiple decision points
Is a PCT application right for this invention?
Decisions when preparing and filing an application
Decisions during the international phase
Decisions when entering the national/regional phase
Global patenting is costly and should not be taken for granted
For each invention, careful consideration should be given to important
filing factors
• Need for exclusivity
• Cost
• Ability to obtain and enforce protection
• Return on investment
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The PCT Decision Making Process

14. Does this invention warrant a PCT application?
What is the business strategy?
• How important is foreign protection?
Advantages of PCT filing
Additional time to make final filing decisions
• Defer national/regional filing costs
• Hold national/regional options open
PCT publication
• Ability to indicate that invention is “available for licensing”
Ease of filing
Availability of International Search Report and Written Opinion
Possible use of the Patent Prosecution Highway
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Decisions Before Filing

15. Choosing a Receiving Office
Generally the Indian Patent Office, EXCEPT
• Choose the International Bureau (WIPO) when there is a need to
restore priority
– Will need an Indian priority application or a foreign filing license
Choosing an International Searching Authority
Indian applicants have a choice of seven: AU, AT, CN, EP, IN, SE, US
• Factors – in addition to personal preference
– Cost (initial, and possible reduced national phase fees)
– Impact on national phase prosecution strategy
» Expedited prosecution
– Possibility of search by an office that was not the office of priority
filing
» Use of PPH
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Decisions When Preparing and Filing a PCT Application

16. Entry into National Phase
Designating countries should NOT be a last-minute act
Country selection should be a priority consideration throughout the entire
PCT process
Factors to consider in designating countries for national phase entry
Need for exclusivity
Cost and return on investment
Quality of protection and enforcement
Goal: To satisfy fully the need for patent protection while having to maintain
patent rights in as few countries as possible.
Keeping in mind that there is no claim to protection in any countries where
patent rights have not been obtained
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17. Selecting Filing Countries
A strategic decision
Where do I intend to market?
Where do I intend to manufacture?
Where are my competitors situated?
Where are future competitors likely to emerge?
How easily duplicated is my invention?
How economically crucial is my invention?
How strong is my patent?
Where are my sources of investment?
How strong is the country’s patent system? Will I be able to enforce my
patent there?
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18. Patent Prosecution Highway
Allows an applicant to fast-track prosecution in second office when first office
finds one or more claims allowable in the corresponding application
Applicant gets results faster with higher quality
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19. Patent Prosecution Highway Spider Web of Countries
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20. Global PPH and IP5 PPH
Participants
Australia Finland Nordic Patent Office
Austria Germany Norway
Canada Hungary Poland
China Iceland Portugal
Colombia Israel Russia
Denmark Japan Singapore
EPO Korea Spain
Estonia New Zealand Sweden
UK
USA
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21. Final Thoughts
File internationally when it is strategically important
File direct national applications when you are only filing in a couple of
countries
Use PCT to hold open options, delay costs
Strategize to minimize costs; file in as few countries as possible
Use PPH when available to expedite prosecution
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22. Questions?
Jay Erstling | +1 612-349-5771 | erstling@ptslaw.com
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