International Patent Filing:

The University Perspective

Technology Transfer TacticsAugust 5, 2010

Overview

• Emory Statistics• General Patent Filing

Overview• Licensee Issues• Nationalization and

Regionalization Examples and Strategies

• Conclusion

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Overview of Filing Practices

• About 200 ID’s per year • File about 65-70 provisional

patent applications per year• Focused in healthcare

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Overview of Filing Practices

• International Filings

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Overview of Filing Practices

• International Filings – past EPO

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Initial Filing Decisions For Emory

• Focused in technology areas with long ramp up times– Ready for filing vs must publish– Almost all provisional applications

• When publication imminent –– Do you need European rights??

• Keep grace periods in mind– Canadian Example

• Publication• Diagnostic test (unlikely to enter

foreign)• Canadian company interested

– 1 year general grace period

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Initial Filing Decisions For Emory

• Does international filing make sense?– Emory ex-US filed technologies – • overall income >$720M

(>$190M without royalty sale) (2000-2009)

– Other, non-ex-US filed revenue ~$20M

– Example – Largest royalty stream - >60% from ex-US sales since 2005

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Conversion Decisions

• PCT vs US only–Historical filing strategies

– PCT and US– PCT only–US only

–Technology Type–Device– Software– Pharma

» Therapeutics» Diagnostics

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Speed of Prosecution

• PCT filing delays prosecution• USPTO examination tracks– Accelerated Examination

• Claim limits and ESD– Patent Prosecution Highway

programs• If favorable examination in “office of

first filing”, get claims accelerated in other PTOs– Currently: Australia, Canada, Denmark, EPO,

Japan, Korea, Singapore

– Triple Tier Examination Proposal• Fast track (no ESD), regular, slow

track

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Technology Timing

• How long does it take to get to “Proof of Principle”

• Prototyping - <1 year • Drug Discovery

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Licensing Issues• Timing of License

– Technology type and effect on licensing– 2009 Cancer Institute Study

• 50% of licenses executed in 3 years from first filing and >90% by 8 years

• Emory – ~45% by 3 years, ~90% by 8 years

• Later deals in pharma – potential higher royalties, better up fronts

• Support longer development times

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Licensee Needs

• What purpose does patent serve?–For litigation, where are

potential infringers?• Market size• Manufacturers (without US

import)• Competitors

–For ‘value add’, is there high perceived value in industry?

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Licensee Issues

• What do licensees expect– Technology type decisions

• Will the license get done?• How will it affect the deal terms?

– Cost-benefit analysis• International filing costs: EPO

alone >20K, overall >100K to be expected

• Expect at least 20-40K before reimbursement - will you increase deal value by that?

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Nationalization Decisions

• Licensed vs unlicensed case

• Examples– 75-80% nationalization

decisions – unlicensed• Examples

– Inflammatory disorders – ex-US; – Quantum dot coating – US only

• Strategies for cost reduction• Keep your eye on the ball!!

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Nationalization Decisions

• Special problems with start ups– Largely immune to costs– Floating debt– Want broad filings to ‘increase

value’

• Strategies for cost reduction– Budget, budget, budget–Watch the bottom line– Do not lose control

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Validation Decisions

• Licensed vs Unlicensed– Where does one typically validate– Why do you care where a licensee

validates– Validating on your own dime

• “Sunk Cost” issue• Will you enforce?

• Costs– Translations – London Agreement– What are the claims??

• Example of claim limitations

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Strategies

• Keep goal in mind –– Don’t undermine global

opportunity, but cost-benefit differs depending on opportunity

• Take control!!– Get budget and watch it– Shop for alternative options – Delay high costs until license–Watch costs for risky licensees

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