The number of worldwide patent applications is increasing at a rapid rate and in Europe too there is a noticeable upward trend. According to figures from the European Patent Office, European direct filings under the EPC and international filings under the Patent Cooperation Treaty (PCT) rose by almost four percent to 244,437 in the period from 2010 to 2011[i]. These applications are extremely time-consuming and are associated with considerable costs, as all of the individual foreign attorneys have to be sent instructions for each country in question. The Dortmund-based plant construction firm ThyssenKrupp Uhde GmbH has optimized its procedure for foreign patent filing by using the global instruction platform www.inovia.com, and has been able to achieve significant cost savings as a result.
When it comes to PCT filings, Germany is not only ranked third in the world but more PCT applications are filed there than in any other country in Europe – 15,000 a year. ThyssenKrupp Uhde GmbH itself files several hundred PCT applications per year and the company has been using the services of inovia, a foreign patent filing provider, for that purpose since the start of 2011. However, ThyssenKrupp Uhde uses the inovia platform not only for the entry of PCT applications into the national phase, but also for validations of granted European Patents (EP) so as to optimize both time and cost savings in these procedures.
“Before we started working together with inovia, our patent department had to handle cases by sending instructions individually to all the foreign attorneys in the countries where we intended to carry out a PCT nationalization or EP validation,” explains Nina Braun, IP Manager of the Intellectual Property-Patent department at ThyssenKrupp Uhde GmbH. In the case of a list of 20 to 25 countries per invention, which is not unusual for ThyssenKrupp Uhde (and sometimes the number of countries can be even greater), an order letter had to be prepared for each country and sent together with the necessary documents. It is obvious that this is not only incredibly time-consuming, but also involves very high costs. Alternatives were sought to try and change this situation.
While attending a seminar, Nina Braun became aware of the services provided by inovia. inovia not only provides a comprehensive technology solution for simplifying foreign filing, but also boasts a global network of agents in more than 100 countries, responsible for coordinating more than 30,000 foreign patent filings totaling more than USD$80 million to date.
Together with her superiors, Nina Braun decided to place a few orders with inovia to test out the service and working relationship. After only a short evaluation phase, the decision was made to take this cooperation further. “As we were very satisfied with the relationship we had built with our colleagues at inovia and the work they had done, we basically gave inovia responsibility for all of our pending nationalizations and validations,” says Braun. There was no need for the members of the IP patent department to receive special training on how to use the platform. “When I started to work with inovia, I learned how to use the system myself, something that can be done in a very short span of time. I then passed on my knowledge to my colleagues and after barely two weeks, everyone in the team was able to use inovia,” says Braun.
Today, all of the staff involved in handling patent cases at ThyssenKrupp Uhde have online access to the inovia website, where it is possible to obtain estimates for foreign filing, select which countries to file into, and attach important documents for the case (such as copies of translations). After entering the required details, the relevant case handler in the patent department receives an order confirmation from inovia and a few days later receives an email containing all the necessary forms for the nationalizations or validations in the individual countries. After processing, inovia sends these forms to the foreign attorneys in the respective responsible offices.
inovia places immense value on complete transparency during the process of foreign patent filing. For example, before placing an order, the client receives a quotation broken down by each country selected. For every invention, it is possible to decide (for each country to be processed) whether to select an attorney from inovia’s network of partners or to use the attorney proposed by the client at the start of the collaboration with inovia. In addition to the option to select the “attorney of choice,” the costs of each attorney that can be selected are also always indicated upon placing an order with inovia, so that the considerable cost savings can be seen even at first glance. “So far, we haven’t been able to see any negative differences in quality between our own foreign attorneys at ThyssenKrupp Uhde GmbH and those proposed by inovia. So, we are very happy to use inovia’s foreign associates, who in most cases are cheaper,” explains Braun.
By switching its PCT national stage entry filings and EP validations to the inovia platform, ThyssenKrupp Uhde GmbH has been able to significantly cut costs, as well as save a huge amount of time. “Sometimes the cost saving can be up to € 10,000 per invention,” according to Braun, who summarizes the situation as follows: “Overall, we are extremely satisfied with this solution. inovia, and in particular Wolfgang Danner (Managing Director of the Business Development department at inovia and head of the Munich office) and his team, are always reliable contact partners, who solve or explain any problems or questions that might arise extremely quickly and to our utmost satisfaction”.
About ThyssenKrupp Uhde GmbH
Having built more than 2000 plants, ThyssenKrupp Uhde is one of the world’s leading engineering companies in the construction of chemical and industrial plants. Its worldwide network, comprising more than 20 international support points, is active in a number of different fields, such as oil and gas technology, fertilizers, hydrogen, polymers and plants for organic intermediates, electrolysis, gas treatment, oil and coal gasification and energy. The company designs and constructs plants for refineries, gas production, gas treatment, syntheses, ammonia, methanol, hydrogen, fertilizers, plastics and synthetic fibres, organic chemistry, aromatics, electrolysis, bleaching chemicals (H2O2, ClO2), oil and coal gasification, coking technology, energy technology, infrastructure and general contracting.
inovia is the global leader in foreign patent filing, having served over 1,000 clients. Its global instruction platform, inovia.com, simplifies the PCT national stage entry, direct (Paris Convention) filing and European validation processes. With headquarters in New York, offices in London, Munich and Sydney, and agents covering over 100 countries, inovia provides support in all major time zones and IP jurisdictions. inovia‘s patented technology pioneered online foreign filing and is recognized amongstWIPO’s most notable inventions. For more information visit inovia at www.inovia.com and follow the company on Twitter @inoviaIP.
[i] Source: European Patent Office. “Direct European filings under the EPC and international filings under the PCT” http://www.epo.org/about-us/statistics_de.html)