FICPIAIPLA ROME, NOVEMBER 2001 COLLOQUIUM ON PENDENCY REDUCTION EXAMINATION BACKLOGS AND THE SPECIAL

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FICPI/AIPLA - ROME, NOVEMBER 2001COLLOQUIUM
ON PENDENCY REDUCTION EXAMINATION BACKLOGS AND
THE SPECIAL PROBLEMS CREATED BY THE PCT

• Dr Vivienne Thom
• Commissioner of Patents
• IP Australia

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(No Transcript)
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Strategies to address workload issues (1)

• Recruitment
• Need to balance examiner numbers with original
  work
• Can be difficult in key technologies
• May not be in national interest to use
  professional scientists as examiners

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Strategies to address workload issues (2)

• Deferred Examination
• Introduced in 1970
• Applicant directed to request examination
• No examination unless ongoing interest
• Allows some regulation of workload

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Strategies to address workload issues (3)

• Modified Examination
• Introduced in 1970
• Based on foreign grant
• In 1978 used by 25
• Now less than 5
• Differences in National Law

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Strategies to address workload issues (4)

• Effective use of search results of other offices
• Enhanced Searches introduced in late 1970s
• Examiner uses judgement and experience to
  determine extent of further search

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Managing Change

• Use of search results required a change in
  culture
• Challenging examiners professionalism
• Original value-adding work required for morale
  and confidence
• Performance standards
• Training and quality assurance process
  essential

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Measuring and Maintaining Quality

• Adopted ISO standards
• Quality standards
• Focuses examination on significant issues that
  affect the scope of the monopoly
• Ensures a correct search strategy is adopted

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International Benchmarking

• Aim for world-class search and examination
  services
• Assess and improve own quality
• Builds confidence and understanding in search and
  examination performed by other offices
• Search-exchange with UK office
• Preliminary work with Canada, Korea and Japan

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Re-examination and Opposition

• Opportunity for reassessment of patents of
  commercial interest
• Re-examination before or after grant allows the
  commissioner to re-examine (and refuse or revoke)
  on the basis of documentary evidence
• Opposition pre-grant allows parties to put
  forward evidence and be heard

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Consulting with Users

• IP Australias Customer Service Charter sets
  service standards
• 6-8 weeks turnaround for international search
• Consult about changes in practice

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Conclusion

• Substantive harmonization long-term goal
• Increase in workload must be managed
• Increased recruitment and rework not the answer
• What might be possible in an environment of
  quality certified offices and mutual trust?