Tech Transfer Central
Industry-Sponsored Research Management

Best Practices for Cost-Effective Filing of PCT and EPO Patent Applications

Format: On-Demand Video, DVD, or PDF Transcript
Originally presented: May 19, 2015

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Foreign filing of university patents is a critical challenge for TTOs that’s often approached in a way that cedes too much control to foreign affiliates — and involves too little internal expertise. Yet there’s so much at stake — not only IP protection and potential revenues overseas, but also in the impact of foreign filing decisions on the overall patent budget.

Whether and where to file, which venue to use (EPO, PCT, or directly by country), and how much you spend on each foreign application are all decisions that can have long-lasting and important implications for your technologies and for your office. Each option has its specific benefits and drawbacks, and how you structure your foreign filing work can either result in too-high charges, or it can keep costs low so you can get stretch your patent budget.

While applications can be certainly be handled stateside, many law firms farm out the work to German firms — an approach that can cost you thousands of extra dollars in the long run. You CAN cut out the middle man, save money and preserve more of your budget — all while securing high quality international patent protection. This crucial webinar will teach you how.

Technology Transfer Tactics has partnered with three attorneys who will provide expert guidance on getting the most out of your foreign filings so you can extend protection to more of your IP. Please join our panel for this highly informative distance learning program:

Best Practices for Cost-Effective Filing of
PCT and EPO Patent Applications
 

Here’s a quick look at what our panel will cover:

  • Factors to consider when deciding whether to file international patents
  • Which technologies you should definitely protect internationally, and which ones would be a waste of time
  • Expert tips for reducing the costs of foreign filing
  • Best practice advice for interacting with and managing overseas attorneys
  • Step-by-step guidance regarding:
    • the PCT timeline
    • relevant dates and deadlines
    • filing during the national phase
  • Cost comparisons between PCT, EPO and direct filing options
  • What’s new in Europe and why Austria is the “Delaware” of the Unitary Patent

Meet your panel of experts:

Jeffrey M. SearsJeffrey M. Sears, Associate General Counsel and Chief Patent Counsel, Columbia University. Jeff’s practice encompasses all aspects of patent law, including prosecution, portfolio management, strategic counseling, licensing and post-licensing compliance, litigation, and legislative and regulatory patent matters. He holds an SB in physics from MIT, an MA and PhD in physics from SUNY Stony Brook, and a JD from NYU. He is admitted to practice law in New York and before the U.S. Patent and Trademark Office.

Robert AldersonRobert Alderson, Partner, Jacobacci and Partners, Torino, Italy. Bob joined J&P in 2011 as a U.S. patent law consultant after working as an intellectual property attorney in New York for nearly 14 years. His practice involves the coordination of U.S. and European intellectual property matters including patent prosecution, due diligence, opinion-writing and counseling on complex legal and technical issues. He has written articles and given presentations on important intellectual property issues in the U.S. and Europe.

Corrado FioravantiCorrado Fioravanti – Partner, Jacobacci and Partners, Torino, Italy. Corrado has an extensive practice drafting and prosecuting European, Italian and International patent applications, mainly in the mechanical field, and has significant experience in handling oppositions and appeals before the European Patent Office, including hearings. He has frequently been involved in patent litigation in Italy, Germany and France.

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