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1. Cost-Effective International Patenting Strategies: Expand Your Global Opportunity Presented by Jeff Sweetman Head of Professional Services, inovia New York | London | Munich | Sydney | Tokyo

2. Cost-Effective International Patenting Strategies: Expand Your Global Opportunity Presented by Jeff Sweetman, Head of Professional Services, inovia August 5, 2010 • Agenda • Foreign filing overview • Foreign filing best practices7 rules for reducing foreign filing costs • 2010 U.S. IP Trends Report highlights inovia’s Foreign Filing Platform 2

3. Foreign Filing Overview

4. Foreign Filing Overview: Two approaches Paris Convention Direct filing into 173 contracting member countries Patent Cooperation Treaty Unified procedure for filing into 142 member countries inovia’s Foreign Filing Platform 4

5. Foreign Filing Overview: Data from inovia’s 2010 U.S. IP Trends Report inovia’s Foreign Filing Platform 5

6. Foreign Filing Overview: Pursuing global patent protection through the PCT process • To pursue patent protection around the world, start by filing a patent application in the country where you live (i.e. your home country). • This application is known as the priority application and the date it is filed is the priority date. • This protection is geographically limited. inovia’s Foreign Filing Platform 6

7. Foreign Filing Overview: Pursuing global patent protection through the PCT process • A common way of pursuing patent rights outside of the home country is to file a PCT application. • Must be filed within 12 months of the priority date. • The PCT does not automatically result in global patent protection, instead it reserves your right to enter over 140 countries that are members of the Patent Cooperation Treaty (PCT). inovia’s Foreign Filing Platform 7

8. Foreign Filing Overview: Pursuing global patent protection through the PCT process inovia’s Foreign Filing Platform 8

9. Foreign Filing Overview: The importance of your patent translation • Required at the 30/31 month stage. • Quality is paramount. • You should be able to say the following about a patent translation: • It is a true and accurate translation of the source document. • The translator is a native speaker of the destination language. • The translator is technically skilled in the relevant technology. • It takes into account any specialist legal language used by patent attorneys in the destination country. • It satisfies all local formatting requirements. • There are ways to save without sacrificing quality. inovia’s Foreign Filing Platform 9

10. Foreign Filing Overview: Pursuing global patent protection through the PCT process • What happens after PCT national stage entry? • Your patent application will be examined. • If there are similar inventions to your application, you and your foreign attorney will need to respond and explain how your invention differs. • Once all of the objections are resolved, your patent will be allowed. inovia’s Foreign Filing Platform 10

11. Foreign Filing Overview: European validation • To pursue patent protection in Europe, you must file a single European patent application with the EPO. • Once your patent is granted by the EPO, you will be issued a Notice of Intention to Grant (71(3) notice). • Your European attorney will have four months to lodge a translation of your claims and the required fees to the EPO. inovia’s Foreign Filing Platform 11

12. Foreign Filing Overview: European validation inovia’s Foreign Filing Platform 12

13. Foreign Filing Overview: European validation • Once validated, you do not need to go through any further prosecution in individual European countries. • Your patent will remain active as long as you continue to pay the yearly fees (annuities). inovia’s Foreign Filing Platform 13

14. Foreign Filing Overview: PCT vs. Paris filing • Paris Convention Advantages • It can result in a faster granting of the patent. • Universal coverage (there are some non-PCT countries). • You can tailor application content for each country. • PCT Advantages • Simplicity: a single application can be filed in the applicant’s home country, in the local language. • It delays (by up to 18 months) the need to make a firm decision on which countries to enter. • Cost savings: it can be cheaper than direct filing for multiple countries. inovia’s Foreign Filing Platform 14

15. Foreign Filing Best Practices

16. Foreign Filing Best Practices • Foreign filing can be very expensive. • IP departments and patent attorneys are under severe budget pressure. • A recession might last a year or two, but patents last for 20 years. • The key is to reduce foreign filing cost without just cutting countries! inovia’s Foreign Filing Platform 16

17. Foreign Filing Overview: The seven rules for reducing foreign filing costs • Rule 1: File a PCT application instead of direct foreign filing. • Filing a PCT application delays the most significant foreign filing costs by at least 18 months. inovia’s Foreign Filing Platform 17

18. Foreign Filing Overview: The seven rules for reducing foreign filing costs • Rule 2:Select countries intelligently. • Consider the “BRIC” countries (Brazil, Russia, India, China). inovia’s Foreign Filing Platform 18

19. Filing into the BRIC countries Data from inovia’s 2010 U.S. IP Trends Report inovia’s Foreign Filing Platform 19

20. Foreign Filing Overview: The seven rules for reducing foreign filing costs • Rule 3:Ace the patent application process. • Carefully review the application to avoid late & additional claim fees. inovia’s Foreign Filing Platform 20

21. Foreign Filing Overview: The seven rules for reducing foreign filing costs • Rule 4:Choose a foreign filing service that’s on your side. • Specialist providers who utilize technology and buying power can offer significant time & cost savings. inovia’s Foreign Filing Platform 21

22. Foreign Filing Overview: The seven rules for reducing foreign filing costs • Rule 5:Batch file to create economies of scale. • Instructing a large number of cases simultaneously can also save you time and money. inovia’s Foreign Filing Platform 22

23. Foreign Filing Overview: The seven rules for reducing foreign filing costs • Rule 6:Consolidate providers. • This will increase buying power and lower your rates! inovia’s Foreign Filing Platform 23

24. Foreign Filing Overview: The seven rules for reducing foreign filing costs • Rule 7:Bring tasks in-house, or outsource! • With sufficient volume, it can make more financial sense to employ an in-house paralegal and attorney vs. using an outside patent firm. • However, outsourcing, in the sense of coordinating foreign filings through a specialist service provider, is also a good way to reduce cost while maintaining or even increasing control. inovia’s Foreign Filing Platform 24

25. 2010 U.S. IP Trends Report

26. 2010 U.S. IP Trends Report An in-depth look at the foreign filing strategies of U.S. patentees • inovia surveyed 150+ small to medium-sized U.S. companies and universities to gauge the impact of the economic downturn on their global IP strategy and outlook for 2010. inovia’s Foreign Filing Platform 26

27. 2010 U.S. IP Trends Report Financial pressures inovia’s Foreign Filing Platform 27

28. 2010 U.S. IP Trends Report Foreign filing statistics inovia’s Foreign Filing Platform 28

29. 2010 U.S. IP Trends Report Foreign filing statistics inovia’s Foreign Filing Platform 29

30. 2010 U.S. IP Trends Report Financial pressures inovia’s Foreign Filing Platform 30

31. 2010 U.S. IP Trends Report Workflow and cost containment inovia’s Foreign Filing Platform 31

32. 2010 U.S. IP Trends Report Workflow and cost containment inovia’s Foreign Filing Platform 32

33. 2010 U.S. IP Trends Report Cutting foreign patenting costs inovia’s Foreign Filing Platform 33

34. U.S. IP Trends University Survey • inovia also surveyed 265 university TTO professionals asking them to assign a priority level to the consolidation of foreign counsel and then explain their assignment. inovia’s Foreign Filing Platform 34

35. U.S. IP Trends University Survey • 62% of respondents assigned this at very low to low priority. • We use outside counsel and do not wish to assume the extra burden of managing yet another relation.” • “[We] rely on domestic counsel to have the appropriate contacts for foreign filing.” • “I prefer that my outside attorneys have the freedom to choose outside counsel with whom they have good working relationships.” • “It is not an immediate problem, but I could see this becoming the case in the next few years.” • 38% of respondents assigned this at medium to very high priority. • “The matter is an important one regarding the economic crisis… companies [are] re-trending choices.” • “In the future clients will need it.” • “We have patents going through the process in several different countries. It would be an unbelievable dream to have a single office handling everything.” inovia’s Foreign Filing Platform 35

36. Survey Download To download your copy of the 6-page report, visit: inoviaip.com/TTT inovia’s Foreign Filing Platform 36

37. Thank You For more best practices and tips on foreign filing strategy and execution, please: • Visit our website at inoviaip.com • Subscribe to our blog at info.inoviaip.com • Follow us on Twitter @inoviaIP +44 203 326 8522jeff.sweetman@inoviaip.com Presented by Jeff SweetmanHead of Professional Services inovia’s Foreign Filing Platform 37 New York +1 212 217 9345 | Sydney +61 2 9290 2607 | London +44 203 326 8522 | Tokyo +81 3 6402 5446 | Online www.inoviaip.com | Email mail@inoviaip.com