Interview - foreign filing expert

Date: 2014-01-15
Author: Clare Taylor

Interview with our foreign filing expert - Clare Taylor

1. You have been in this business for over 20 years. What was your initial interest in the patent industry?

I suppose a number of things drew me to this industry. I am interested in science and technology. I like order and have a keen eye for detail. Though I have lived in Australia for many years now, I am Canadian and worked and travelled with the Canadian Foreign Service for a number of years. That has given me an interest in the world at large and some small insight into the, at times, idiosyncratic operations of government agencies. I think these things have helped my career in the industry. A particular benefit is that I love to work with smart, interesting, engaged people. This firm, its people and clients is the perfect fit.

2. What are some of the changes you have seen in the profession during this time?

One change that certainly affects our day to day activities would be the use of technology. Take sending filing instructions for example; a few quick mouse clicks have replaced piles of photocopying, faxing and courier deliveries.

From a broader perspective, national governments around the world have increasingly recognised that businesses expect their intellectual property to be appropriately protected. National patent laws have been simplified and tightened.

International agreements are becoming the norm. I was involved with filing trade marks for many years and watched the growth in membership of the Madrid trade mark system. We now have the Community design regime, the broadening of the European patent convention and of course, the PCT. The growth in bilateral and multilateral PPH agreements is streamlining patent prosecution. It is a constantly changing landscape.

3. Have you seen a change of focus in which countries clients are interested in obtaining patent protection?

It depends on the technology, of course, but when I first started, client interest in Asia was particularly focussed on Japan, Singapore and South Korea. Economic growth in the region and confidence in the integrity of national patent regimes has broadened interest to other countries. China and India were the first to be added to the list. Now our clients are more frequently filing in Malaysia, Indonesia, Thailand and the Philippines. A lot of work seems to be going on at the national level in the latter countries to harmonize patent filing and prosecution, particularly with the emergence of ASPEC.

4. What are some of the challenges you see in the filing process?

On the macro level, while perhaps not a challenge, timeliness and being kept in the loop is really important to me and I know it is important to our clients. Sometimes it can be a challenge to impress on other foreign agents the importance of these things. I see my role very much in managing foreign agents so that the client is kept informed in a timely manner. On the micro level, I know it sounds like a small thing, but often the trickiest part of the filing process is getting forms signed. While some countries do not require any forms at all and others will accept an electronic copy of a simply signed Power of Attorney, many Patent Offices still require original, hard copy forms. Where inventor forms are required, chasing down inventors can sometimes be difficult for our clients.

5. What would you say would be the benefit of using an Australian firm to manage patent portfolios in the Asian region?

Well, all Australian firms are based in the geographic region, in the same time zone and so that provides some benefit to those clients who are based outside the region. I can’t speak for other firms, but my firm and my practice group has been managing across this region for many years now. We know the networks, we have an established brand, and that gives us access to the best people in Asia and buying power. I’ve seen it work really well for those larger US corporates who don’t want to have to manage multiple relationships across the region. I guess it just makes sense for them.

6. Where do you see future changes?

You’d expect to see more regionalisation, although whether that means a unitary patent outcome like we will probably see in Europe or just more harmonisation and patent prosecution highways is not certain, although as far as South East Asia goes, given the emergence of ASPEC, I’d probably say the latter.

Technology is going to be pivotal. Our clients are on the "cutting edge" and we need to be there with them. Currently we are involved with IP Australia in the pilot to use the new ePCT portal for filing PCT applications. IP Australia will shortly set the date by which they will accept PCT applications by this method and we plan to be there at the beginning.

One thing that doesn’t change is the people. We need to continue to build and nurture our relationships with our clients and with our local agents so that we can provide the best, most reliable service to our clients. The firm has a long history but it feels young and dynamic. We aim to be at the forefront of innovations. It is a very exciting time to be in this business with this firm.

For further information on foreign filings, please contact Clare Taylor