Developing an International Perspective: Using the PCT

1. Jay Erstling Director, Office of the PCT World Intellectual Property Organization (WIPO) Geneva, Switzerland Developing an International Perspective: Using the PCT

2. Overview • Importance of an international patent strategy • Role of the PCT

3. Intellectual property = a valuable business asset Must be: Planned for Protected strategically Managed effectively in order to be profitable Importance of an international patent strategy

4. Steer R&D in worthwhile directions Acquire appropriate patent rights in the “right” countries Exploit and enforce patent rights effectively Manage costs A successful international patent strategy will allow a company to:

5. Protect core technological advantage Secure R&D pipeline Reinforce products’ differentiating features Build patent walls Control key methods and processes minimize risk of being blocked Leverage product and technology platforms Balance benefits and costs Goals

6. To exclude competition and block copying To facilitate market entry To protect/expand market share To earn income Profits from sales of products Royalty income from licenses To raise money Value of a good search report To serve as a negotiating tool in Strategic alliances, joint ventures, cross licensing, sales of assets Why patent?

7. Patent wisely by: Prioritizing inventions Carefully selecting countries Managing costs

8. Analyze and balance: Cost and complexity of obtaining rights Cost of patent maintenance Ability to obtain and enforce patents Strength of the rights available State of the law Against: Value of the invention Size of the market Competitive landscape A country-by-country balancing act

9. Role of the PCT

10. Traditional patent systems 0 12 File applications abroad File application locally • Local patent application followed within 12 months by foreign applications in all countries in which protection is sought: • multiple formality requirements • multiple translations • multiple national fees • multiple patent agents

11. Overview of the PCT procedure International SearchReport Written Opinion of the ISA International Preliminary Report on Patentability (IPRP ch.I) -established by IB- No ch.II international preliminary examination ? (month) 0 12 16 18 30 22 Priority PCT filing National phase Publication 28 International Preliminary Report on Patentability (IPRP ch.II)-established by IPEA- Yes

12. PCT provides time, defers costs, provides valuable information and preserves options: One application One Office One language An early effective filing date An information-rich search of the prior art An opportunity to amend the description and claims 18 additional months for patenting decisions Easy entry into the national phase Benefits of the PCT

13. PCT: Delays filing fees Delays national attorney fees Delays translation costs Provides more time: For testing and technical development For marketing and commercialization For licensing and financing For finalizing selection of countries Permits early evaluation of inventions Facilitates reallocation of IP budget resources Benefits of the PCT (continued)

14. PCT Growth

15. Country ranking - 2005

16. Ranking based on population - 2005

17. 1. Philips 2. Matsushita 3. Siemens 4. Nokia 5. Bosch 6. Intel 7. BASF 8. 3M 9. Motorola 10. DaimlerChrysler 11. Kodak 12. Honeywell 13. Ericsson 14. Samsung 15. Procter & Gamble 16. Sony 17. Mitsubishi 18. Dupont 19. Toyota 20. Thomson Top applicants - 2005

18. Contracting States • Non-stop growth: over one million applications • Non-stop expansion: 132 Contracting States

19. PCT: One million applications and still counting--------------------- Thank you