The document discusses the impact of the America Invents Act on the surge of U.S. priority filings, leading to challenges for organizations in managing foreign patent filings. It emphasizes the need for proactive strategies and formalized processes to handle the resulting increase in applications due for national phase entry, as well as the importance of timely decision-making and resource management. Key lessons include establishing clear workflows, setting targets, and engaging partners early to reduce costs, improve quality, and minimize risks associated with filing deadlines.

1. Lessons from the AIA Foreign Filing
“Aftershock”
Presented at the 9th Global Patent Congress 2015
Copenhagen, Denmark
by Matthew Sekac
Senior Director, Sales Strategy
Park IP Translations
www.parkip.com

2. Overview
• The implementation of the America Invents Act’s key provisions
triggered an unprecedented spike in US priority filings.
• As a consequence, a historically large number of applications came
due for National Phase Entry on or around September 15, 2015.
• This created a challenge as well as potential risk for both our
organization and patent applicants worldwide.
• In confronting this challenge we gained a great deal of insight into
how patent departments manage their foreign filing activities across
different organizations.
• The experience highlights several features of the most effective
patent filing operations, and what many organizations can do to
improve.

3. Background:
“Old Rules” Spike in US First Filings
• Key provisions (most notably the change from first-to-invent to
first-to-file) of the America Invents Act (AIA) went into effect on
March 16, 2013.
• In the weeks leading up to the effective date, many applicants
sought to file as many applications as possible under the “old
rules.”
• The result was an unprecedented spike in the daily volume of US
priority filings with the USPTO in the days leading up to March 16,
2013.

4. Per estimates from Intellectual Property Watch, daily filings of
provisional and non-provisional apps peaked dramatically in the days
leading up to March 16th:
The “Main Shock”

5. The 30-Month “Aftershock”
A spike here… …means a spike here.
Priority
Application
Is Filed
PCT
Application
Is Filed
30-31 months
12 months 18-19 months
China
EPO (31)
Japan
Eurasia (31)
Korea (31)
Canada
Mexico
Brazil
PCT
National
Phase Entry
The spike in US priority filings generates a corresponding spike in US-
originating applications due for PCT National Phase entry 30 months
later (September 15, 2015).

6. 0
1000
2000
3000
4000
5000
6000
1/1/2015 2/1/2015 3/1/2015 4/1/2015 5/1/2015 6/1/2015 7/1/2015 8/1/2015 9/1/2015 10/1/2015 11/1/2015
US-originating PCT Apps due by day in 2015
Apps Due - US-Originating Average US (excludes weekends)
Prepared by Park IP based on PCT application data from WIPO

7. Key Data Points
• Average number of US-originating PCT applications due for
National Phase entry per day: 230*
• Apps due Sep 13, 2015: over 1,200
• Apps due Sep 14, 2015: over 2,400
• Apps due Sep 15, 2015: over 5,700
• Daily (non-w/e*) average from Jan – Aug: 196 apps
• Daily (non-w/e*) average from Sep 1 – 15: 1,116 apps
• Monthly volume increase forecast at approximately 250% in Sept.
*Averages omit dates corresponding to weekend dates 30 months prior.
Source: Park IP analysis prepared using published PCT data from WIPO.

8. Challenges & Potential Risk
• Many of these applications would require translation.
• Patent translation requires specialized linguistic resources;
translators must possess linguistic, technical/scientific, and patent-
specific expertise.
• The global supply of these resources is limited and could face
challenges in accommodating a large, sudden spike in short-term
demand.
• This introduced a risk for applicants. Possibilities:
• Inability to access qualified resources.
• Resources only available at additional expense.
• Quality may suffer if suppliers were forced
to use less qualified translators.

9. Managing The Risk - Internally
• Park IP’s preparations began in earnest in Q3 of 2014, with both
internal & external elements:
• INTERNAL: Production Capacity Preparations
• Resource recruitment, training, positioning, preparation.
• Internal Project Management and Quality Review Team preparation and
scheduling guidelines.
• These preparations allowed us to successfully manage:
• Nearly four-fold increase (3.79x) in monthly volume of PCT National Phase
translation orders due this September.
• Nearly five-fold (4.77x) increase in monthly volume by words.

10. Managing the Risk - Externally
• EXTERNAL PREPARATIONS: working together with clients.
• Engaged directly with clients to establish a proactive strategy for
management of 2015 translation needs.
• The message was simple: make filing decisions for 2015 as early as possible,
to eliminate risk, ensure access to the most appropriate resources, and likely
generate cost savings.
• The effort was a success: less than 10% of our clients’ “AIA projects”
were started in the same month as the filing deadline. Normally
such cases account for 25% to as much as 70% of PCT National Phase
translations prepared by Park IP.
• The experience was eye-opening, and suggested several key
takeaways that organizations may find useful in improving their
foreign filing operations.

11. Lessons Learned
• In engaging with clients proactively to “get ahead” of the
September 15 spike, some organizations had a much easier time
adjusting their process than others.
• The organizations best able to make adjustments to their decision-
making timelines were those with formalized procedures,
documented lead-time targets, and an existing routine of acting
in advance of deadlines.
• Other organizations found responding to these circumstances
extremely challenging, despite being extremely receptive to the
information. These organizations generally rendered filing
decisions in a less-formalized, ad hoc manner.

12. A Snapshot of Existing Practice
• As part of Park IP’s campaign to educate industry professionals
about the AIA’s Foreign Filing Aftershock, we delivered a webinar in
February of 2015 during which we shared data and
recommendations for mitigating potential risk.
• The webinar was attended by more than 80 patent practitioners
situated predominantly in North America and Europe.
• During the webinar we asked participants: “How far in advance of
the applicable deadlines do you typically send foreign filing
instructions?”
• 0-30 days before the deadline: 49% of respondents
• 30-60 days before the deadline: 30% of respondents
• 60-90 days before the deadline: 19% of respondents
• 90+ days before the deadline: 2% of respondents

13. Deciding When to Decide
• Initiating foreign filing procedures close to the deadline potentially
increases cost and introduces risk.
• Many organizations routinely pay official fees for late filing of
documents and/or expedited service charges to their agents
or other service providers.
• The quality of work performed under tight deadlines may
suffer, potentially compromising the strength of protection
while increasing cost of patent ownership.
• Short timetables make it difficult to incorporate procedural
safeguards against human error—i.e. “things being missed”—
that increase the likelihood of missed filings and loss of
priority.

14. Deciding When to Decide
• Organizations do face legitimate challenges in initiating foreign
filing procedures in advance:
• Decisions may depend on forthcoming data from
research/studies pending completion.
• Decisions involve multiple stakeholders in different departments
who must be gathered to reach consensus.
• Budget impact assessments and cost/benefit analysis may be
complex or uncertain.
• Funds may not be immediately available to cover major
expenditure (i.e. broad filing of a large biotech application).
• Institutional Inertia

15. Institutional Inertia:
“The Way We’ve Always Done Things”
“The truth is that the filing decisions on most of these
applications are already made… they’re just in peoples’
heads.”
- Chief IP Counsel of a Fortune 500 company during a discussion
about 2015 foreign filing & translation needs.
“I’m going to do everything I can to get the team to act in
advance, I’m just not sure whether it’s going to be possible.”
- Foreign Filing Coordinator at a Fortune 500 company during a
conversation about the AIA spike.

16. Example Best Practices
• Over the past year we’ve encountered the following examples of
successful practices at various organizations we work with:
• Establish a process. The most efficient filing operations we’ve
encountered have implemented formalized procedures and
documented workflows for the entire patent lifecycle.
• Set targets and expectations. As a component of developing your
process, establish timeline expectations both internally and with
service providers, as well as systems for verifying compliance.
• Look ahead, act early. Take a forward-looking view of your docket,
beyond just the applications with imminent deadlines; evaluate
whether there’s enough information to make foreign filing decisions
on future applications, and start the process early where possible.

17. Example Best Practices (Cont.)
• Involve your partners and service providers early.
• Your partners can be a resource for budgeting and forecasting by
providing forward-looking cost information which can facilitate
decision making.
• Your service providers may benefit from (and will probably
appreciate) the guidance and opportunity to prepare and ensure
resource availability, even if the final “go” is still pending.
• Build in “buffers” and “sign posts” throughout the process.
• Establishing a structured timeline that incorporates a buffer of time
ahead of deadlines affords flexibility to manage unforeseen
circumstances and reduces risk.
• Especially with high volumes, incremental progress validation points
or “sign posts” throughout the process help identify potential issues
and ensure that things aren’t missed.

18. How Organizations Benefit
• Reduced cost. Avoid official/professional fees for late filing and/or
expedited service charges.
• More visibility. Improved budgeting and better informed
cost/benefit assessments.
• Improved service quality. The process takes time—especially
when translation is involved—and a robust quality control process
incorporates multiple layers of review. More time = better results.
• Reduced risk of error or missed deadlines. Increased likelihood of
spotting issues in time to fully address them.
• Fewer surprises, better results. Internal stakeholders and service
providers have the flexibility to confront unanticipated
circumstances, whether internal or exogenous.

19. Park IP Translations
15 West 37th Street
8th Floor
New York, NY 10018
Office: 212.581.8870
Fax: 212.581.7722
Email: info@parkip.com
contact
matthewsekac
senior director, sales strategy
15 w 37th Street, 8th floor
New York NY 10018
e: msekac@parkip.com
o: +1 212 765 5111(ext1158)
www.parkip.com
follow me @ParkIPTrans