Advancing Global Innovation: The Role of PCT Practice and Strategy

1. 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.

2. 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

3. Intellectual Property, Innovation and
International Development

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

5. 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).

6. 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 Regime
2. Innovation
3. Education
4. Information Infrastructure
The subcomponents for the economic incentive regime
are:
1. Trade policy
2. Intellectual property protection regime
3. Government regulation

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

8. Or, in other words:
Technology stasis leads to
economic stagnation
Technology progress leads to
economic growth

9. 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.

10. Knowledge is a key driver of global
innovation and economic growth.
Knowledge is distilled information.
Access to information drives
innovation.

11. Human resources,
tacit knowledge,
and creativity
Codified
Knowledge
R & D
investments
and facilities
Entrepreneuria
l environment
and incentives
IPR
legislation and
regulations
Innovation
capability
Determinants of innovation capability

12. 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.

13. 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.

14. Managing Patent
Information to advance Innovation:
Global PCT Strategy

15. 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.

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

17. 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 optionally
File demand
by month 22
International
preliminary
examination
(months)
The PCT system

18. 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

19. Where Should I Seek Patent Protection
Commercial Need for Exclusivity
Initial and Long-Term Cost
Quality of IP Protection &
Enforcement
Return on Investment

20. 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.

21. 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.

22. 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?

23. 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?

24. 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?

25. 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.

26. 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?

27. 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?

28. 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).

29. PCT Materials Courtesy of

30. 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

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

32. 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

33. Patent Searching Curriculum: from novice to
mastery:
• Mining Patent Data in the New Millennium
• ITTI Patent Landscape Basic Clinic

34. Patent Searching Curriculum
Comprehensive, full year program:
1. Mining Patent Data
2. ITTI Clinic, first semester
3. ITTI Clinic, second semester
Students proceed from:
1. Fundamentals, to
2. Application, to
3. Leadership and management roles.

36. 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

38. Patent Analytics

39. ITTI Patent Landscape Clinic

40. 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

41. 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.

42. Spring 2009 ITTI Team

43. 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.

44. ITTI Patent Landscape Clinic
Insect Resistant Sweet Potato with CGIAR
Codon optimized
genes
Codon Optimization
Transformation
Cry7Aa1, Cry3Ca1 & ET33-34 genes

45. ITTI Patent Landscape Clinic
HIV Project with UC Davis (PIPRA)

46. ITTI Patent Landscape Clinic
Analytics now used:
Delphion
MicroPatent
Patent INSIGHT Pro
Aureka ThemeScape
Excel

47. ITTI Patent Landscape Clinic
HIV DNA Vaccine Patents Assignees

48. ITTI Patent Landscape Clinic
HIV DNA Vaccine Patents Assignees

49. ITTI Patent Landscape Clinic
HIV Adenoviral Vaccine Patent Applic. Filing Trend (PIP)

50. ITTI Patent Landscape Clinic
HIV Adenoviral Patent Assignee, Manual Count

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

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

53. ITTI Patent Landscape Clinic: Semester
Work Product Report

54. Patent Searching Curriculum:
Unique
Comprehensive
Focused
Practice-based
Thank you …. Q&A

55. 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.