The first weekend of April it snowed in Ottawa, and I was “San Diego dreaming”.  Now at the end of May it is ‘stinking hot’ in Ottawa (that is the technical term). For proof, here is my ski wax thermometer (photo taken at 18:00 hrs, in the shade).

Ottawa weather is erratic, but the fundamentals of effective marketing are constant.

IP is about trusted relationships. Forming and keeping trusted relationships takes time and consistent effort. A “one and done” meeting is not a relationship. Follow up is crucial.

Have you followed up with all of the contacts that you made at INTA? Have you sent all the LinkedIn connection requests that you planned? If not, take a moment and do it now. You have just spent a lot of time and money to make some new connections – now you need to nurture them.

More free info on marketing

Coming soon: a webinar series on marketing for IP practitioners.

Our seminar at INTA on marketing for IP practitioners was a huge success: attendance was very strong, interest high, and the feedback very positive. Thank you  very much to all who made it such a success.

Obviously there is a real hunger in our community for information about how to market. I am hard at work developing a series of free webinars so that more of you can participate (and learn from my mistakes).

Do you have a topic you want covered?  Is there an issue that you are wrestling with at your firm?  Please send me an email.  No issue is too small, no question is silly.

Neil Milton

The post From freezer to frying pan appeared first on Miltons IP.

Clients hate paying ‘by the fry’.

Why do people love the pricing of Happy Meals?  Because they know what they are getting for one fixed price.

When it comes to IP prosecution the same principle applies: clients love fixed prices and they hate to be nickeled & dimed.  No one wants to pay for their french fries one fry at a time, and no one wants to pay for each office action, reminder email, reporting letter, or status update no matter how trivial. This is especially true for foreign prosecution of applications that are substantially similar to the lead originating application (patent or trademark) at home.

Great service means giving clients great work at the price they expected all wrapped in a very user friendly delivery.

For most clients,

• price certainty is more important than rock bottom prices, and
• ‘many tiny bills’ are extremely annoying.

Price certainty is especially important for good quality clients.  Good clients know that service costs money.  They do not expect free advice or work, and they know that quality costs.  However, good clients also tend to be organized and diligent.  That means that they expect to the know the cost of something upfront and likely have shared that estimate with other stakeholders (for instance, with the CFO of their organization).  Accordingly, good clients are particularly likely to be frustrated by budget over-runs.

Also, regardless of the total cost of something, you should be very wary of a snowstorm of small unexpected bills.  In my experience, a blizzard of small bills, no matter how reasonable the total cost, drives clients crazy.  If you are not careful, with foreign patent filings you can be billed by your associate for reporting every letter that they receive from their local patent office. Clients enjoy this about as much as they enjoy buying their french fries “one fry at a time”. It is extremely annoying and a great way to drive clients away.

The solution is to bill flat “block” fees for a given amount of work that ensures you have sufficient compensation to provide great service through the whole process.  That way, all of the little noise goes away, and you and your client and your associate can focus on what really matters.

Neil

The post What Happy Meals teach us about keeping IP clients happy. appeared first on Miltons IP.

There were no great bargains to be had in Target’s unfortunate foray into Canada. What happened to Target with trademarks is particularly illustrative of how a cross-border move can go badly.  Put simply, Target came to Canada with much fanfare, lost approximately $7B US, and now two years later, Target is retreating via a messy bankruptcy of their Canadian subsidiary.

Target’s woes included substantial trademark difficulties.  When it came to Canada, it was confronted with a prior registration for TARGET for use in association with clothing retail stores.  Clearly this presented a problem.  Target challenged the prior registration but did not succeed in expunging it, and ultimately ended up purchasing the prior registration.  The value of the transaction has not been disclosed but is estimated to be in the “8 figures”.

In fairness to Target, the prior registration was longstanding and there had been sufficient use by the owner that it was not amenable to expungement.  Accordingly, Target really faced a situation with no pretty outcomes, but certainly their bargaining power could not have been improved by the fact that the issue was not resolved until just prior to opening of the stores.

However, as a general rule, with some advance planning, smart, frugal companies can get a much better result at remarkably low cost.  In particular, companies considering a cross-border expansion should rush to file trademark applications in Canada based on ‘proposed use’ (equivalent to ‘intent to use’ in the US)

Because the government fees for filing a Canadian trademark application are only $250 regardless of how many classes of goods or services are claimed in the application, and because it is straightforward to keep an “intent to use” application alive for four years or more, $2000 buys a very effective form of insurance for applicants who may want to enter the Canadian market in the future.

I admit that the Target story is actually not a perfect illustration of the value of proposed use applications in Canada (because of the clear prior registration they confronted), but because they have made such an ugly mess of their entire ‘Canadian adventure’ I don’t mind using them as a good example of imperfect trademark practices.

Neil

The post Target’s trademark miss appeared first on Miltons IP.

I was recently told by a British colleague that Canadian patents were pricey. I was stunned, and did not respond properly at all. After some reflection, I put together this little video to say now what I should have said then.

The handout is:

If you insist on knowing more, here is an eBook:

Filing Patents in Canada: A Practical Guide

And our website exclusively about filing into Canada is:

Canadian Patents

The post Are Canadian patents pricey? appeared first on Miltons IP.

I always thought that it “took two to tango”. However, a recent US Federal Circuit decision disagrees: in Promega v. LifeTech the Court held that you could induce yourself to infringe by shipping from yourself in Texas to yourself in the UK.

Obviously, I think that decision is bizarre and probably not something that you want to hang your hat on.

However, where or not it is possible to induce yourself, what Promega v. LifeTech really illustrates is the importance of filing patents in major markets – as your competitors likely will have operations outside the US and can evade your US patent unless you file where they are. A patent governs the right to ‘make, use or sell’ the invention in a jurisdiction, and if any of those can happen at scale somewhere outside the US, then you need to think seriously about filing there.

Neil

The post Why file abroad appeared first on Miltons IP.

for foreign filings

It is crucial to ensure that all stakeholders have shared expectations in advance for foreign filings.
Foreign filings work if they flow smoothly, and there were shared expectations about:

• substantive issues (claims that matter, likely to be allowed)
• timing
• costs

Getting everyone on the same page starts with clear communications. Our little eBook is an example of a resource that you can use to start the dialogue.

Any and all suggestions for improvement warmly received.

Neil

The post Setting expectations appeared first on Miltons IP.

When you file patents outside the US that correspond to the patents you are already filing in the US you can add significant value to the applicant’s portfolio very cost-effectively. The applicant gains rights in large markets that may be as valuable if not more valuable as the rights in the US, depending on the product, competitors, and market forces (see this post for an example of “why you should file abroad“).

This increased geographic scope of patents can also be a very effective way to add value to your practice – you are adding value to the applicants’ portfolio cost-effectively, and this is something you can and should be rewarded for doing (whether you are inside or outside counsel).

However, not all foreign filings go smoothly. The most common problem is what I call the “death of 1,000 paper cuts”. Foreign filings rarely lurch sideways in one big mess. Instead, if they are not properly planned and implemented, it is the slow, steady accumulation of little things that must be attended to – often late, and in a rush – that gradually create client frustration. Each one of these late and unexpected little steps usually is accompanied by another invoice. And that, ultimately, puts the whole project behind schedule and over budget.

In subsequent posts I will talk about how to avoid this problem. In a nutshell, the solution is to ensure that all stakeholders have shared expectations (about cost, timing, and substantive success), that there is a good plan for execution, and that the right people put the right amount of attention into implementing the plan efficiently and effectively. Foreign filings are not a black art – pulling them off properly just requires a little know-how, some planning, and timely attention to detail.

As always, I look forward to your comments.

Neil

Free eBook

Foreign Filings

Prepared in cooperation with Dennemeyer.

Click to download now.

The post How foreign filings can go wrong appeared first on Miltons IP.

The formal deadline for filing a Canadian PCT national phase is month 30.

It is possible to extend this deadline to month 42 upon payment of a small additional fee of $200. (Technically, this is a ‘reinstatement fee’).

This extension is available as of right, without explanation.

Learn More.

Free eBook.

Click to download.

The post PCT National Phase in Canada: month 42 appeared first on Miltons IP.

Want to avoid being sued?  Want to be a foreign filing hero?

Make sure the chain of title is correct.

In particular, we strongly recommend as best practices that you secure assignments from the inventor to the applicant:

• As soon as possible, and ideally before the first application (eg. provisional) is filed;
• Signed by both assignor and assignee;
• Properly dated;
• Have the signatures witnessed, and ideally notarized.

Following these simple steps will avoid a lot of time, cost, and grief later in prosecution.

As always, we welcome your comments and questions.

Neil

Free eBook

Foreign Filings

Prepared in cooperation with Dennemeyer.

Click to download now.

The post Assignments appeared first on Miltons IP.

The world really does move in mysterious ways, and nowhere is that more true than in the economy.

The price of oil is way down. The US Dollar is way up relative to the currencies of most other countries, including in particular Japan, Korea, China, Europe, Canada and Australia.

Perhaps there is no link between the two facts, but for our purposes what matters is that the cost of acquiring IP outside the United States has dropped dramatically recently – at least 10% since the summer of 2014, and as much as 20% from the most recent peak (depending on the jurisdiction).

If your foreign associates are giving you fair exchange rates, this effective price reduction for American applicants applies to both the official fees and the professional fees.  It creates a golden opportunity to think strategically about building the portfolio with applications filed 12-30 months ago.

This is the first in our Foreign Filing Hero series of short videos. We hope that you enjoy them. Comments and questions are always welcome.

Neil

Free eBook

Foreign Filings

Prepared in cooperation with Dennemeyer.

Click to download now.

The post Foreign IP is on sale appeared first on Miltons IP.