Home > Topics > Patents and Patenting: Balancing Protection with the Public Domain > Filing and Defending Patents in Different Jurisdictions > Editor's Summary, Implications and Best Practices

Best practices in IP management is about identifying IP assets, organizing resources, building capacity, formulating options, and then pursuing strategies that will maximize the value of an organization’s IP assets. Managing patent portfolios is always challenging, even more so now with the rapid globalization of technology markets. But this also makes best practices in patent portfolio management more critical for effectively distributing innovations in the health and agricultural sciences, whether for commercial purposes or for facilitating humanitarian access.

As public and private sector institutions increasingly work in a global context, choosing where and under what circumstances to file for patents is becoming increasingly more important, and the following factors should be considered:

• The objectives of the organization with respect to its issued patents
• Assertion of patents offensively, either as part of a licensing strategy or in litigation if companies are unwilling to license
• Assertion of patents defensively, as leverage in licensing negotiations or to ward off litigation by others
• If a portfolio is to be used offensively, identifying where potential targets are located or doing the bulk of their business
• If a portfolio is to be primarily defensive, identifying where an organization may be most at risk from licensing approaches or litigation offensives by others

The answers to these questions will often drive decisions about where to seek patents. In addition, the prospect of litigation, whether offensive (to protect market share) or defensive (to level the playing field for licensing discussions when the target of a patent suit), is an important consideration when determining where to apply for patents.

As with other IP management practices such as licensing, collaborations, and technology transfer, developing an effective global patent filing program requires thoughtfully determining in which jurisdiction(s) to file (U.S. Patent and Trademark Office, Japanese Patent Office, European Patent Office, or a receiving office of the Patent Cooperation Treaty (PCT)). In addition, establishing foreign priority is critical in a global patenting program, whether via the Paris Convention, the PCT, or bilateral treaty agreements.

To reduce the cost of a global patent filing program, one should make sure that the invention has a truly global market potential. If the invention has only limited regional application, then, clearly, it does not merit global filing. It is also important to realistically determine whether the invention will still be used 15 or 20 years from the date of filing. In many countries, the typical term for a patent ranges from 15 to 20 years from the date of filing. If the invention has a short lifespan, then a global filing program may not be economical. In fact, patent protection itself may not be worth the effort.

A global patenting effort does not mean that one should try to patent everywhere on the planet. Because the rights accorded to the patent owner are separable (the right to exclude one from selling OR the right to exclude another from manufacturing) one can divide the countries of the world into those where the invention can be manufactured vs. countries where the invention will be sold. And even after identifying those countries where the invention might be marketed, it is often unnecessary to file in all of the identified countries. After covering a substantial portion of the world market (for example, 80-90% of the countries where the invention can be marketed), any potential infringer/competitor will be able to enter only 10-20% of the worldwide market, which is likely a sufficient economic disincentive.

A global patent program should be proactive as well as preemptive in its outlook, especially regarding the potentiality of patent litigation, where knowledge of options can save time and money. To illustrate the importance of evaluating the options for patent litigation, the chapter compares and contrasts the various courts within the U.S. Federal District Court system, revealing some important factors that can save time and money.

The chapter then compares and contrasts the advantages and disadvantages of pursuing patent litigation in either a Federal District Court or in the U.S. International Trade Commission (ITC). Although the U.S. ITC’s jurisdiction is essentially limited to cases dealing with the illegal importation of alleged infringing products, there are times when it might be a good idea to pursue this route. In addition, one can also pursue patent infringement litigation in both the Federal District Court (patent infringement action) and the U.S. ITC (unfair trade practices action) at the same time.

As one component of an integrated system of IP management, a global patent filing program is essential for both maximizing the value and protecting the integrity of an organization’s patent portfolio. It requires an understanding of the dynamics of the international patent landscape, the strategic organization of the patent portfolio, and shrewd planning to anticipate the possibility of litigation and how to respond to it. With such a comprehensive program in place, both public and private sector organizations will be positioned to anticipate, manage, and overcome the challenges, uncertainties, and vicissitudes that characterize the international technology marketplace in agricultural and health innovations.

Key Implications and Best Practices

Given that IP management is heavily context specific, these Key Implications and Best Practices are intended as starting points to be adapted to specific needs and circumstances.

For Government Policymakers

• Countries that are not yet members of PCT or the Paris Union may gain significantly from joining the two conventions as membership in them can greatly benefit national innovative institutions.
• If a country is not yet a member of the Paris Union, it should seriously consider joining. This will protect the international value of its inventors, value that will ultimately come back to that country in enhanced economic development.

For Senior Management (university president, R&D manager, etc)

• Implement institutional policies for patent application filing. This can include setting priorities, organizing patent portfolios and setting development objectives.
• It is important for an institution to provide its scientists and technology transfer offices with adequate support to implement IP policies. This will include building the human, institutional, and physical infrastructure needed to advance best practices in IP management.

For Scientists

• The R&D carried out in your program can lead to valuable patentable inventions.
• Develop a good relationship with your technology transfer office. Take advantage of their training programs. Contact them with any IP questions, or if you have an experimental result or advance that appears to need IP rights protection.

For Technology Transfer Officers

• Communicate, communicate, communicate… to senior management and to scientists the importance of including IP management aspects in certain research proposals and the increasingly importance also of including a line item in budget for the preparation of and international filing of patents.
• Establish a comprehensive patent portfolio management policy.
• Know the advantages and disadvantages of filing patent applications in various jurisdictions.
• Provide training on managing patentable inventions to your office and your institution.
• In order to determine when and where to file patent applications, develop an informational resource system in your office to research patenting options and potential markets for your institution’s inventions.
• In the event of patent litigation, consult with counsel on the best options for selecting forums for filing a complaint, based on cost, speed, and the likelihood of success.
• It is very important to know what legal options are available for use against alleged infringing activities. For example, in the U.S. there are the options of either filing a claim in Federal District Court or with the U.S. International Trade Commission.