Patenting in a global economy

Making the various patent systems of the world work more effectively together is a perennial concern. They have differing criteria, grant protection for different periods of time, and only cover their own geography. That poses challenges in an age when companies source products on a global scale and seek to address worldwide markets. Would it be better if patent offices were more alike? Small Times’ David Forman asked four experts from different countries how the globalization of intellectual property impacts micro and nanotechnology.

Q: Do your clients in the micro/nanotech sector currently file for patent protection in a variety of countries? In your opinion, which systems work best? Why?


Donald Featherstone
Director
Sterne, Kessler, Goldstein & Fox
Washington, D.C.
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FEATHERSTONE: Our clients within the micro/nanotech sectors generally seek protection abroad. Most commonly our clients file within Europe and Japan because of the overall market importance of these regions and their well established patent systems. Additionally, nanobio clients also tend to file in China and India because of their large populations, while nanoelectronics clients tend to also file in China, Korea, Taiwan and Singapore to target manufacturers. While there is room for improvement in patent systems throughout the world, we have found that the EPO (European Patent Office) and JPO (Japan Patent Office) systems work reasonably well, which is likely a reflection of their experienced examining corps.

KREYE: Clients from the nanotech sector usually are looking for broad protection. Thus, if possible they like to file in Europe, the U.S. and Japan. China is also becoming increasingly important. However, some companies in the nanotech field are small research entities and don’t have the financial capability to seek broad global protection. I usually recommend to those clients to file a German national application and within the priority deadline a PCT (Patent Cooperation Treaty – a global IP collection hosted by the World Intellectual Property Organization) application. This saves costs at the beginning and at least ensures that they can claim a good priority.

SUSTRIK: For clients seeking international protection, the PCT filing system continues to be an effective and cost-efficient route. However, the cost of entering national phase at the end of the PCT period continues to be a significant hurdle for many mid-size and startup companies.

WILLIAMSON: Most of our nanotech experience within the firm lies in the optics field, with MEMS devices and the like. We have not encountered any greater variety in the level of service or the competency of examination in this area than in any other sector.

Q: Would your clients benefit from global patent harmonization? If so, how?

FEATHERSTONE: Global patent harmonization needs to occur. However, realistically our current nanotechnology clients are likely to see little if no benefit from current global patent harmonization efforts. The need to harmonize patentability standards is not as great as the need to strengthen global patent enforcement. With stronger and more effective enforcement of patents, our clients are likely to be more willing to engage in joint development with overseas companies and introduce products into other markets sooner.


Boris Kreye
Partner
Bird & Bird
Munich, Germany
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KREYE: This depends a lot on how the system would be harmonized. Some formal aspects are certainly beneficial. Harmonization would strengthen the legal certainty of what can be protected in the different jurisdictions and it could reduce administrative work. Nevertheless, whether such harmonization is really desirable for my clients can only be answered if the would-be regulations are known.

SUSTRIK: Global patent harmonization would be beneficial in simplifying matters – in particular, the issues regarding novelty and prior public disclosure. It should make it easier to develop a global, intellectual property protection strategy and should also provide opportunities to reduce costs.

WILLIAMSON: Global patent harmonization is a very commendable goal and in many ways the patents profession is moving toward harmonization. For example, outside of the area of computer implemented inventions there is really not a great difference between major jurisdictions regarding patentability. I don’t believe that further harmonization would be beneficial to the nanotech sector in particular.

Q. Would there be any negative implications of global patent harmonization? If so, what are they?

FEATHERSTONE: A possible negative consequence of global patent harmonization is that regulators and legislators will lose sight of strengthening and more consistently enforcing patent rights. While developing global patentability standards is laudable, legislators and regulators cannot lose sight of the most important need – better global enforcement.


Gordon Sustrik
Partner
Bennett Jones
Edmonton, Alberta
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KREYE: Global harmonization would likely require global prosecution. Therefore, if a patent is not granted, this would have worldwide implications. Under this aspect many unharmonized patent systems might leave some protection. Besides that, different countries have different standards for patentability. For example, a German patent generally has a higher threshold for non-obviousness than a European patent. What will be the global standard?

SUSTRIK: No.

WILLIAMSON: Harmonization can bring certainty through uniformity. However, we have to ensure that the levels of examination are maintained at a uniformly high level and harmonization does not result in a lowering of standards. The nanotech sector would not benefit in the long term from a flurry of granted patents of dubious validity.

Q. Do you see micro and nanotech patenting activity as unique in any way? Must clients in the micro and nano sector be more attuned to global protection?

FEATHERSTONE: Nanotechnology patenting activity is unique in several ways. Nanotechnology is evolving at a time when the global marketplace is extremely patent savvy. Furthermore, as author Thomas Friedman has observed, the world is far “flatter” today, leading to aggressive global competition. As a result significant interest and resources are being spent globally to secure patent protection by companies – not just in their domestic markets, but throughout the world. Second, nanotechnology is somewhat unique in that it is multidisciplinary and often quite complex, which strains worldwide patent offices.

KREYE: Nanotech patents are unique in a way because the category of claims is an issue. In some areas you have old material but now on the nanoscale that exhibits new properties in a particular application. A wide product claim may not be obtainable because just the size of a material may not be a proper feature to render something new and non-obvious. Thus, only a claim for a specific application could be obtained.


Brian Williamson
Head of patent prosecution
Olswang
London
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SUSTRIK: On a strategic basis, I do not believe there is anything particularly unique to the micro and nanotech patenting activity. There is a need to integrate the intellectual property protection strategy with the client’s development strategy and marketing strategy. The nuances arise from the nature of the business involved. As with other sectors (biopharma, information technology, etc.) important elements of the overall business plan drive specific decisions with respect to intellectual property protection.

WILLIAMSON: I would say that most nanotech applications come proportionately from small research-based startups and young companies. For that reason nanotech companies have to be careful how they spend their money and should perhaps consider foreign filing programs very carefully. I would recommend, as with most clients, that they focus on the industrially and commercially mature markets with a secondary, but regularly reviewed, focus on emerging markets.

Q. Do you feel your country’s system suffers from overlapping patent claims and/or confusion about nanotech? If so, what could be done to remedy the matter?

FEATHERSTONE: Notwithstanding the general shortcomings that plague the USPTO, the USPTO has focused on improving examination of complex nanotechnology patent applications. As a result – with this extra focus – generally the PTO is up to the task of reviewing complex nanotechnology patent applications. Last year our firm conducted a review of the patent prosecution histories of every nanotube patent that issued in 2004. While some issues existed regarding the quality of the examination, we generally found that the examination was solid, and trending in the right direction.

KREYE: I think the EPO has people who are qualified in nanotech but it is a new and undefined field. One should not rely on a specialized and well-trained examiner in the EPO but should take into account that prosecution may take some time. As I said, available prior art and the respective knowledge are a big issue. At the end, experience, number of patents and some technical training are probably the best remedy.

SUSTRIK: The Canadian Patent Office suffers from a general lack of appropriate staffing levels, and from a lack of specialized examiners. As with other specialized fields such as biopharma, the answer lies in hiring individuals who have educational or industry experience in the relevant field. Such individuals can then offer specialized internal training to other examiners.

WILLIAMSON: This is a criticism which has been leveled at new technologies across the board. I remember biotech not so long ago suffering from this complaint. I don’t believe that nanotech applications suffer from poor examination at either the UK or the European Patent Offices. However, as examiners become more experienced, improvements can presumably still be expected.

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