Lessons from the AIA Aftershock

Deciding When to Decide By Matthew Sekac

Deciding when to Decide IPPro The Annual - 2015-2016_Park IP TranslationsIn the following article recently published in The IPPro Annual 2015 – 2016, Matthew Sekac from Park IP Translations looks at some of the lessons learned as a result of the AIA Aftershock. He details how ongoing cooperation and partnership is the best way to achieve an organization’s goals for global patent portfolio management.

 To download the article, click on the following link: IPPro The Annual – 2015-2016_Park IP Translations.

As predicted, the first half of 2015 saw many in the patent industry preparing for a historic spike in US-originating patent applications that were due for PCT National Phase Entry on or near September 15, 2015.

This was the consequence of an industry-wide rush to get new applications on file before the rule changes in the America Invents Act (AIA) went into effect on March 16, 2013. In early 2014, Park IP Translations began sharing and preparing for this phenomenon and its potential impact on the volumes of translation requests, which we entitled The AIA’s Foreign Filing Aftershock.

The forecast received widespread attention across the industry, including patent practitioners, trade publications and other professional service providers. These historic circumstances introduced a potential risk for patent applicants and language service providers around the world. Any provider that did not start to prepare well in advance would create unnecessary risk and potential financial losses for patent owners and legal practitioners.

The campaign to educate the market and clients started in 2014; however, it stands to have a lasting impact on the patent and patent translation industries. The bar has been set on how legal professionals and language service providers must work together to ensure that source of risk are identified early, requirements are understood, and potential roadblocks or challenges are communicated and prepared for well in advance. Constant communication, open feedback and trusted partner values do matter and can avert hazardous outcomes.

Findings Based on Experience

Direct customer experiences and business intelligence obtained throughout the spike provided an enormous amount of valuable data about how our clients work and what their processes look like for making foreign filing decisions.

We were surprised at how widely approaches varied for both law firms and corporations. Some were rigidly organized, timely and efficient in their approach, while others were ad hoc, inconsistent and usually last-minute. What we also found, less surprisingly, was that while the first group of clients were readily able to take action and make adjustments, the second group, while receptive to the information and in agreement with our conclusions, struggled to alter or accelerate their internal practices.

For example, in a discussion with a patent paralegal at a large patent filing organization there was natural agreement that the best course was to act quickly. Unfortunately, they also expressed skepticism that anything could be done to get filing decisions sooner. The sentiment was that it made perfect sense to “start early” and they appreciated the guidance and education; however, it’s just too hard to change the way things “normally” get done.

In a 2015 survey, Park IP Translations asked a large sample of patent professionals how much lead time they normally had to work with when foreign filing. More than half of respondents reported that foreign filing decisions were made and instructions sent less than 30 days before the applicable deadline for any given application.  A very small minority, only 2% of respondents reported they had 90 days or more of lead time.

Analysis of data on Park IP’s filing translation projects corroborates these findings. The data reveals that most patent professionals are instructed less than 30 days before the applicable filing deadline, and at least for our casework, roughly one third are instructed less than two weeks in advance.

Preparing for the Inevitable

Understanding the circumstances under which patent professionals operate is critical for patent service providers. Experience and data on timing and deadline requirements must be part of the basis for developing sustainable and effective service offerings that cater to the needs of the client.

When it comes to foreign patent filings, there is some cushion built into the system. It is helpful that most PCT countries have grace periods available for submitting translated applications after the initial filing deadline.  For many organizations, utilization of these extensions has become routine practice.  When additional time is not available, scale from service providers is critical. As an example, Park IP Translations has the flexible capacity and the process expertise to organize and deploy large teams of resources capable of executing very large volumes in very short timetables.

Scaling capability is essential for helping clients out of some tight spots. Park IP Translations has been able to deliver translated materials under extremely challenging conditions for filing around the world because of a robust, scalable operational infrastructure and extensive experience managing rush projects. Sometimes this requires imagination and will, as in one particular engagement where the final product was hand delivered to a patent professional about to board a plane bound for another continent, with a filing deadline mere hours after the flight’s scheduled landing.

These situations are not unmanageable, but they are also not ideal. Once filing decisions are made, the process of foreign filing a patent application requires the contribution of multiple parties. The client initiates and oversees the process, often with the help of outside counsel or another service provider, and executes the required documentation. Translators prepare required translations. Then patent agents prepare the filing documents and submit them to the patent office with the support of their own staff.

Almost everyone with a role to play in that filing process will be used to doing their part under pressure—and often routinely.  That’s just how business gets done in many cases. Unfortunately, this also creates risk. Deadline pressure simply constrains the ability of all parties to perform their role with maximum care, and frequently generates additional expense. It negates the possibility of building in buffers of time to accommodate unforeseen circumstances.  However adept we have all become at managing these “unplanned” circumstances, these conditions simply increase the likelihood of mistakes. And in this business even small mistakes can be very costly.

Plan Ahead to Get Ahead

There are any number of reasons why organizations start the foreign filing process close to the deadline. Foreign filing decisions often have significant budgetary impact, especially for organizations like small biotech companies that might need to go out and raise over $100,000 just to apply for patent protection in a half dozen foreign countries.

Understanding the costs is part one of the planning process. The precise expenses over time may not be clear to decision makers, which can complicate the cost-benefit analysis and obstruct efforts to assess the relative priority of applications within a limited budget. These decisions also frequently require the participation of multiple stakeholders from different departments, or they might depend on the results of an incomplete study or other ongoing research.

In many cases, the biggest reason is simply institutional inertia. Information collected by Park IP Translations in preparing clients for the AIA spike in 2015 suggests that frequently the only barrier to starting the foreign filing process early is the “get started” meeting. At many organizations, the meeting does not usually happen until a month before the filing deadlines, and not for any particular reason.  Most of the filing decisions are actually pretty straightforward.  As one department head recently suggested, “the filing decisions on most of our applications are already made, they’re just in peoples’ heads.”  And the process cannot get started until what is “in peoples’ heads” is formally discussed and put on paper.

Why is it normal to wait until the last 30 days?  The most common response from the groups we have talked to is simply that “they have always done it this way.” There are many patent professionals that are almost unfailingly diligent about instructing new foreign filings well ahead of the applicable deadlines. Perhaps they benefit from some structural advantage. It would be noted, they come from organizations both big and small across a diverse array of industry sectors. Their real source of success is the series of proactive initiatives they have undertaken to improve internal procedures for managing their foreign patent filings.

Decide Now, Wait Later

It’s as simple as it is daunting. Organizations that act in advance are predominantly the organizations that choose to act in advance—and then follow through. Make no mistake, they benefit from it. These organizations don’t rack-up late filing charges and they avoid fees for expedited services. By starting the conversation early, they can gather information from service providers and other partners to inform their budget impact assessments. Advance planning provides the opportunity to build in a comfortable buffer of time to ensure that unforeseen circumstances do not have damaging consequences. Extra lead time makes it possible to implement a process with multiple checks that reduce risk.

These are also the organizations that have the easiest time avoiding risk from sudden spikes in volume requirements, whether the source is internal or exogenous.  The lessons learned through the AIA Aftershock prove that ongoing cooperation and partnership is the best way for all to achieve their respective goals – on time and in all languages.

Matt Sekac Park IPFor further information about the findings or to discuss how to best protect your patent portfolio, contact Matthew Sekac, Senior Director of Strategy at Park IP Translations, a Welocalize company. matthew.sekac@parkip.com.

To download the article, click on the following link: IPPro The Annual – 2015-2016_Park IP Translations.

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