SDOs and Patent Offices : Interface improvement

1
SDOs and Patent Offices Interface improvement

• Dr Michel Goudelis,
• Director Telecommunications, EPO

GSC-13, July 2008 Boston, USA

2
Introduction

• The issue of ICT Standards is becoming a priority
  area for EPO's external relations policy. In
  September 2006 we initiated a new phase of our
  encounter with the ICT-standards world.
• The reason is that in the field of ICT Standards
  strengths and weaknesses of the patent system are
  magnified.

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Tensions are appearing

• Rising tensions through competing business models
  but also because of geopolitical reasons
• Increased scrutiny "from outside" competition
  authorities, politics, courts, now also IP
  institutions (see new debate at Standing
  Committee on Patents of WIPO)
• Principal problem IPR policies of most SDOs are
  confronted with new challenges
• Tensions are a particular expression of the
  broader challenges in the governance of the
  global knowledge economy

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Internal measures

• Increased awareness (reaching at highest level)
• Technology watch in this particular field
  (resource planning)
• Supply additional resources in the following
  areas
• Documentation (standards related documents
  acquisition and processing)
• Examination
• additional training
• systematic links with technical committees of
  SDOs
• Special services for SDOs (landscaping, patent
  searches) ?

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Standards related documents

• Access to all non-confidential technical
  documents (standards, temporary, drafts,
  contributions, ...)
• Technical field (publishing working group) on
  each document
• Effective publication date of submitted
  contributions
• Clear dissemination policy

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Non-confidential technical documents

• ContributionsFirst disclosure of new technical
  information shortly before or during a working
  group meeting
• Temporary - not by all SDOsDocuments that are
  deleted after a certain period or if a new
  version is published
• Drafts - not by all SDOsPre-versions of a
  standard, base for discussion and voting
• Standards Final document after discussions,
  agreement and voting

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Non-confidential technical documents
Why contributions?

• Not every contribution (1, 3) becomes part of a
  standard
• Patent application is non-public up to 18 months
  after filing
• Contributions represent the first publication of
  new technology

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Working group information on all documents
300.000 documents

• Search Tool

1500 documents
WG 1
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Effective publication date on all documents

• public when up-loaded to documentation server

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Effective publication date versus Meeting date
Patent Appl. 7.2.2007

• available before meeting
• Publication date vs meeting date
• ? Risk of not considering contribution 1 as
  prior art and granting patent

(filing date)
time
(publication date)
Contr. C1 20-21.2.2007 (1.1.07) WG A
Standard (C1) 20.4.2007 WG ?
Contr. C2 20-21.2.2007 WG B
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Clear dissemination policy
Non-confidential
Confidential
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External measures

• Bridging the two worlds Resolution at GSC 12,
  encouraging SDOs "to cooperate with the relevant
  Patent and Trademark Offices to provide access to
  technical information for use by such Agencies
  that should help them improve the quality of
  patents being granted".
• Interface amelioration Suggestion from ITU TSB
  Director's Ad Hoc Group on IPR to ITU and by
  ETSI's IPR SC  to agree on a minimum standard for
  standards documentation including publication
  date, working group and further data to improve
  identification of prior art for patent
  examination