AIA Aftershock Countdown Considerations

80716192For those who work with Park IP, awareness of the aftershock from the 2013 changes to the American Invent Act (AIA) is nothing new. Since early 2014, Park IP launched our campaign to share with the global patent community the concerns over the impact that the AIA will have on the global Patent Cooperation Treaty (PCT) market in 2015. Park IP Senior Director Matt Sekac published his first blog on the subject back in February 2014, Preparing for the AIA’s Foreign Filing Aftershock, and this year, Park IP has been supporting clients and preparing them for what could be the Y2K of the Patent Industry.

Here we are on the cusp of the final run up to the 30 month deadline. Using a consultative approach, Park IP have been working with our clients to minimize the impact. However, there is still much to do. Here are three key considerations in the final months before the AIA aftershock PCT deadline of September 15, 2015.

PLAN AHEAD

If you are a patent holder, you need to be discussing with your attorney the risks of delaying the filing instructions. Increased demand on highly specialized resources could result in you not being able to file in certain jurisdictions. If you are an attorney and expecting to receive incoming instructions from the United States, you should be discussing if there will be an increase in workload. Once you know any potential increase in work, correct resources can be put in place. Remember that September is at the end of the holiday period and resources may need to increase to meet the demand.

CONSIDER RESOURCES

Cash is king! A familiar cry from many businesses; however, none more so than those in the patent industry. An unprecedented increase in workload may stretch projected cash flows unless provisions are made in advance. Whether official fees or third parties, careful consideration needs to be given if present models can be flexed without breaking or additional funds need to be sought.

USE EXPERTS & SPECIALISTS

Highly accurate translations are the backbone of the PCT national phase. Question what your suppliers have done to prepare for the spike and whether they have the relevant expertise and experience to deal with such complex subject matter. Intellectual Property Watch published a useful article on the spike in PCT applications: The Patent Office estimates of filings made between March 19, 2012 and March 19, 2013, generally show a trend of roughly 1,000 to 2,000 non-provisional patent applications and less than 1,000 provisional applications filed each day. In the days leading up to March 16, 2013, there was a large peak of 14,000 non-provisional and provisional applications filed each day. Not all of these will go to PCT, however a good many did and expertise is in high demand. You will want to have your experts ready to assist. Expecting that a current translation provider will be able to support the demand without any provisions is a high risk strategy. As they say in the stock market, “past performance is not indicative of future results.” This is an unprecedented spike in activity and the risks cannot be ignored.  Seek those experts that are committed to providing the capacity and assistance you need to meet your deadlines.

As Matt Sekac says in his blog, “The spike in translation requests worldwide may create a strain on the best available resources and require some providers to go deeper and deeper into their roster of translators to accommodate the demand. Applicants can play a meaningful role in improving the quality of translations they receive by getting their providers started sooner rather than later.”

AIA filings through 3-19-2013

If you think you are going to need legal language services to help with PCT applications, then act now! Park IP is prepared and ready to assist. Don’t be too late to translate.

Tim

Tim Moorcroft is European Business Development Director at Park IP Translations. Email: tim.moorcroft@parkip.com

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