Introduction to PCT
As it is well known, Patent Cooperation Treaty (PCT) is an international patent law treaty that provides a unified procedure for filing patent applications to protect inventions across multiple jurisdictions.
International patent applications for patent protection are filed in India with the Indian Patent Office under the provisions of the Patent Cooperation Treaty. PCT patents can be licensed after performing thorough patent due diligence of a patent portfolio for creating an efficient patent strategy so that strong value is added to the intangible assets of a company.
Advantages of PCT
The main advantages of PCT include cost management, flexibility to formulate an international patent strategy, and effective management of patent portfolio.
An effective strategy to file patents worldwide is to formulate patent strategy in a manner such that it is in sync with business strategy. In other words, all steps of patent process, including, preliminary patent search to determine patentability, patent application drafting, patent filing (provisional, non-provisional, PCT international phase & PCT national phase applications), patent assignment and patent licensing, should be timely executed in accordance with business strategy, including, product design, prototyping, product launch (domestic and global), marketing, sales, and the like.
In-House Patent Counsel’s Best Practices
Almost every company engaged in research and development (R&D) has an in-house IP (Intellectual Property) department, and generally, the IP team works in close coordination with the R&D team. With a view to have strong patent strategy, the business strategy unit of the company should collaborate closely with both the IP team and the R&D team. Such collaboration can provide long-term strategic advantages to the company. For example, while developing future business strategy, IP team can provide in-depth analysis of competitor’s patent portfolio, which can provide clarity regarding competitor’s plans to launch future products. Such analysis of competitor’s patent portfolio is usually termed as “IP Positioning”.
Formulating Patent Strategy – Challenges
Although every company tries its best to formulate a strong and long-term patent strategy, still there exist certain challenges with the organization that can prevent complete utilization of intangible assents like patents. For example, R&D budget is always limited, which significantly impacts the patent strategy, mostly due to high costs that are incurred while filing patents across multiple countries. Therefore, wise allocation of budget is necessary and a common practice followed by companies worldwide is to create balance between in-house and outsourced patent activities.
Innovation Landscape – Patent Analytics Case Study
Patent analytics can be used as a crucial tool to prepare innovation landscape for any particular technology, following which the retrieved data can be used for multiple purposes, such as, for example:
(i) To determine scale and intensity of patenting activity across a particular technology sector.
(ii) To assess level of collaborations between Industry, Academia and Government by specifically focusing on patents filed jointly as a result of research collaboration between public and private sector, along with universities.
(iii) To evaluate quality of patenting activity.
(iv) To identify target markets by determining white gaps between existing patents (including both granted patents and pending patent applications).
Accordingly, by performing such patent analysis and processing patent data thereafter, patents may be employed to indicate R&D performance of a particular company, or a particular jurisdiction, or a particular technology sector, and the like. By extracting, analyzing and processing patent data from database (USPTO, PCT WIPO, Espacenet, etc.), Inventive Activity, Scope, Intensity, Collaboration and Impact across various technology sectors can be easily determined. Subsequently, data metrics can be developed across technology sectors, inventors, applicants, regions and countries.
Patent Citations – Patent Citation Benchmarking
By using patent citation metric, the number of times a patent application has been cited can be determined. Accordingly, number of citations can indicate positive relation to the economic value of a patent. Generally, patent citations are of two types, forward citations and backward citations.
Forward Citation is mostly used for Patent Valuation. In addition, number of forward citations indicates the technological importance of patent for development of subsequent technologies.
Conclusion – Importance of Patent Strategy
Therefore, as may be seen, patent metrics may be employed to identify valuable inventions to formulate patent strategy, which is in accordance with the business strategy of the company.
We provide comprehensive Patent and Trademark legal services via our global network to create valuable patent portfolios and resolve complex patent disputes by providing patent litigation support services.
Our team of advanced patent attorneys assists clients with patent searches, drafting patent applications, and patent (intellectual property) agreements, including licensing and non-disclosure agreements.
Advocate Rahul Dev is a Patent Attorney & International Business Lawyer practicing Technology, Intellectual Property & Corporate Laws. He is reachable at rd (at) patentbusinesslawyer (dot) com & @rdpatentlawyer on Twitter.
Quoted in and contributed to 50+ national & international publications (Bloomberg, FirstPost, SwissInfo, Outlook Money, Yahoo News, Times of India, Economic Times, Business Standard, Quartz, Global Legal Post, International Bar Association, LawAsia, BioSpectrum Asia, Digital News Asia, e27, Leaders Speak, Entrepreneur India, VCCircle, AutoTech).
Regularly invited to speak at international & national platforms (conferences, TV channels, seminars, corporate trainings, government workshops) on technology, patents, business strategy, legal developments, leadership & management.
Working closely with patent attorneys along with international law firms with significant experience with lawyers in Asia Pacific providing services to clients in US and Europe. Flagship services include international patent and trademark filings, patent services in India and global patent consulting services.
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