13/07/2017

Support for those who want to license, among the novelties of the seminar of WIPO and INAPI international patenting systems

Seminar of international patenting. Photo courtesy of INAPI

The National Institute of intellectual property (INAPI) and the world intellectual property organization (WIPO for its acronym in English), with the cooperation of the European Patent Office (EPO for its acronym in English) and the Pontifical Catholic University of Chile (PUC), they organized the "International patenting strategies seminar". The event was held the 9 June in the center of innovation Anacleto Angelini of the PUC and attended the Samanta Elgueta and Susana Labra, CREATECH markets and technologies executives. The seminar was composed of four lectures that addressed different issues related to both international and national patents.

International patenting strategies

The first "overview of the Patent Cooperation Treaty (PCT). Patenting strategies related to the PCT", It was dictated by Rolando Hernández, Chief of the services section of the Office of the Division of the cooperation international WIPO PCT, who stood out among other issues that in Chile are universities which have greater number of patent applications, Unlike in most of the world, where is the business sector which makes more requests.

It was also mentioned that the applicant can be incorporated into the international publication a free notice indicating that you are interested in licensing the technology and sign a contract, This option is available through PatentScope, WIPO patent database. In addition the filing of the application in electronic way has as benefit reduction rates, get higher percentages of discount to be pdf and xml.

Finally some statistical figures were delivered, like for example that during 2016 fields that filed most PCT applications were:

  • Digital communication with 17.776 applications.
  • Computer technology with 17.155 applications.
  • Electronic machines and energy-related equipment with 14.465 applications.
  • Medical technology with 14.265 applications.
  • Apparatus or tools to measure with 9.338 applications.

Being the countries with largest amount of PCT patent applications: United States with 56.595 applications, Japan with 46.239 applications and China with 43.168 applications. Highlights that the latter country had an increase in applications of the 44,7% with regard to the 2015.

The second talk "the European patent system and its relationship with the PCT. Patenting strategies", was conducted by Paola Giancane, Lawyer of the legal European and international affairs of the EPO address, who mentioned among several issues that this single office receives requests from persons with nationality or resident in one of the 38 EPO member countries. It was also noted that EPO is working to achieve a unitary patent for countries participate in this office that you have entered into the agreement. This unitary patent came into force the 2018, After that, to achieve agreement on the unified patent court. It should be noted that the unitary patent would coexist with the European patent, However cannot get double protection.

National patent strategies

Henry Crew, Chief of Departamento PCT INAPI was in charge of the third exhibition "The PCT and its operation in Chile". In the talk he spoke of INAPI as office ISA/IPEA, role that plays from October of 2014, and among the interesting data was pointed out countries most used INAPI in this function: Chile. Colombia, Costa Rica, Cuba, Ecuador, El Salvador, Guatemala, Mexico, Panama, Peru and Dominican Republic. Also noted that in Chile the 82% applicants, they used to INAPI as receiving office, carries out the processing PCT and the 18% use the Paris Convention. He also said that areas that have more applications via the PCT in Chile are mechanical 49%, Chemistry 19%, Power 13% and pharmacy 5%.

Other interesting topics mentioned by Henry is that in the future there is the possibility to publish patents through INAPI's free website and not in the official journal; as also the fact that it is in talks to lower the rates applied to universities.

The fourth and last talk "patenting strategies used by universities in the international arena. The experience of the PUC', was conducted by Alvaro Ossa, Director of transfer and development of the PUC. Alvaro highlighted the quality of University research that is carried out in Chile, for example mentioning that if well Chilean universities are in fourth place in Latin America in terms of scientific publications through their journals with little more than 79 thousand documents published between 1996 and 2013, lies first of all in relation to amount of citations in other publications with a total of 14,2 citations by publication.

However also this looks like a dilemma, Since the Chilean investigations are cited as prior art in several patents of other countries, but few Chilean patent applications. I.e. in Chile it is generating good information and patentable, but to be published and not protected they are the basis for the generation of patents in other countries.

Finally Alvaro presented data regarding the process of consolidation of transfer and licensing offices (OTL). They have formed 19 OTL, which up to 2015 generated 304 invention disclosures, 131 priorities of invention patents, 42 licensing, 76 technology contracts and 9 technology-based ventures.

In relation to this activity Samanta Elgueta points out that "I thought it was a pretty productive instance since it met its objective of delivering information and advice in relation to the processing of the applications for patents via the PCT, updating knowledge which already possessed. Be grateful for the effort by organizers to bring professionals from different parts of the world".

While for Susana Labra “It was very interesting to attend this seminar, because strategic aspects of patenting that allowed me to complement knowledge mentioned, as for example being able to mention in the publication that you are looking for licensing. On the other hand always it is enriching to be in contact with the environment of innovation and to find known people".

 

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