Global Business Solutions for Patent Prosecution

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Global Business Solutions for Patent Prosecution
Symposium of Intellectual Property Authorities
Niclas Morey Geneva, 22 September
2011 Director International Organisations,
Trilateral and IP5 European Patent Office
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Contents
Contents

• The global challenge ? the IP5 vision and the IP5
  concept
• The IP5 Foundation Projects
• IP5 achievements in IT-related business processes
• The Trilateral "Common Citation Document" (CCD)

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The need for IP5 cooperation
The need for IP5 Cooperation

• The global patent system faces important
  challenges
• filing levels increasing worldwide
• increase in prior art documentation that is
  difficult to access
• language (Chinese, Korean, Japanese)
• classification (several classification schemes to
  be used to search all patent literature)
• rising backlogs and pendency

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The need for IP5 cooperation
The need for IP5 Cooperation
Global patent filings rising continuously,
especially Chinese applications
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Perspectives for China and its patent system

• Patent outlook for China
• Patent filings rising from 400k (2010) to
  750k/year with a similar rising number of utility
  models by 2015
• SIPO increases number of examiners to 9000
• Increase in the number of patent agents to 10.000
• Average time for SIPO to examine applications 22
  months
• Strong support / incentives to enhance the filing
  of patents - also abroad

Trends in the Patent System
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IP5 Vision
IP5 Vision

• The elimination of unnecessary duplication of
  work between the Offices, enhancement of patent
  examination efficiency and quality, and guarantee
  of the stability of patent rights
• Work-sharing potential At least 250 000
  applications/year among the IP5 Offices (same
  application filed at more than one IP5 Office)

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IP5 Concept
IP5 Concept

• Establishment of the appropriate infrastructure
  allowing for the greater integration of the
  global patent system on the basis of
• Work sharing timeliness is essential
  (availability of results)
• Quality increase
• better access to world's prior art documentation
• tools to share results
• 10 Foundation Projects creating the environment
  that will facilitate the elimination of
  unnecessary work between the OFF and the OSF
  (www.fiveipoffices.org)

• Common documentation (EPO led)
• Common hybrid classification (EPO led)
• Common access to search and examination results
  (JPO led)
• Common application format (JPO led)
• Mutual machine translation (KIPO led)
• Common training policy (KIPO led)
• Common examination practice rules and quality
  management (SIPO led)
• Common statistical parameter system for
  examination (SIPO led)
• Common search and examination support tools
  (USPTO led)
• Sharing and documenting search strategies (USPTO
  led)

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Progress WG2 - "IT-related Business Processes"
Timeliness

• Office of First Filing (OFF) to deliver results
  on time for Offices of Subsequent Filing to
  re-use OFF's results
• Timeliness from Asian offices affected by
  "deferred examination"
• - JPO (3 years), KIPO (5 years) and SIPO (3
  years)
• Work-sharing platforms
• "FLASH" pilot - USPTO prioritise first filings
  subsequently filed at EPO
• "JP-FIRST" - JPO prioritise first filings with
  Request for Examination
• "PPH", both National and PCT - applicant may
  request rapid examination at a OSF on presenting
  initial positive results from OFF

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Progress WG2 - "IT-related Business Processes"
Patent Cooperation Treaty (PCT)

• Well-functioning work-sharing platform since 1970
  
• Timeliness guaranteed
• WIPO PCT Roadmap delivering improvements
• EPO implemented Supplementary International
  Search (SIS) in 2010
• EPO engaged in Collaborative Search and
  Examination pilot with USPTO and KIPO
• EPO to deliver second written opinions in
  Chapter II from 1 October for projected negative
  IPERs due after 1 December 2011

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Progress WG2 - "IT-related Business Processes"
Patent Prosecution Highway (PPH)

• "PPH", both National and PCT - applicant may
  request rapid examination at a OSF on presenting
  initial positive results from OFF
• gt applicant-driven work-sharing scheme
• National PPH
• Pilots EPO-JPO and EPO-USPTO
• Applicant presents results from Office of First
  Filing with at least one patentable claim
• Office of Subsequent Filing accelerates
  processing of subsequent application
• PCT PPH
• Applicant presents results from PCT International
  Search with at least one patentable claim
• Office of Subsequent Filing in National /
  Regional phase accelerates processing of
  subsequent application
• PPH version 2
• Applicant may present positive results from any
  office (Office of First Examination) to any other
  office (Office of Later Examination)
• Office of Later Examination accelerates
  processing of later application

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Progress WG2 - "IT-related Business Processes"
Better access to world's prior art documentation

• Common Hybrid Classification and Cooperative
  Patent Classification
• Currently there are several classifications
  schemes IPC, ECLA, USPC, FI/F-Terms
• IP5 offices have agreed to move forward to
  harmonise schemes into one scheme , the so-called
  Common Hybrid Classification (CHC)
• EPO and USPTO have agreed form the Collaborative
  Patent Classification (CPC) to accelerate the
  move to a common scheme
• Common Documentation -
• IP5 Heads' agreement on "Policy on Common
  Documentation", including
• Common agreed set of data to be consulted by IP5
  Offices when performing prior art searches
• Allocating priorities in the context of patent
  and non-patent literature data acquisition
• Establishment of a media-less data exchange
• Common Search and Examination Support Tools
• Documentation of existing tools and future plans
  completed.
• Agreement on pilots on how best to search IP5
  collections of Patent and Non Patent Literature.
• Mutual Machine Translation -
• IP5 Quality Assessment Methodology agreed
• 1st quality assessment of Chinese, Japanese,
  Korean Machine Translation completed by EPO,
  USPTO

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Progress WG2 - "IT-related Business Processes"
Sharing of search and examination results

• One Portal Dossier (file information available to
  the IP5 offices)
• agreed business and architecture requirements
• agreement to go to secure open network for data
  exchange
• specification being finalised
• inter-office testing to start mid-2013
• Sharing and Documenting Search Strategies -
• documentation of existing recording procedures
  and future plans completed.
• Pilots initiated on sharing Search Strategies.
• Trilateral Common Citation Document
• "virtual common search report" on a patent family
  
• Public launch foreseen for November 2011

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Progress WG2 - "IT-related Business Processes"
Importance of improved international
collaboration

• IT systems need to make results available to be
  shared
• Currently multiple technical platforms being
  developed Need for compatibility to assure
  future efficient international collaboration!

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Need more information?

• www.epo.org
• Thank you for your attention!
• nmorey_at_epo.org
• www.fiveipoffices.org