Global Business Solutions for Patent Prosecution

Niclas Morey Geneva, 22 September 2011Director International Organisations, Trilateral and IP5European Patent Office

Symposium of Intellectual Property Authorities

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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)

Contents

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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

The need for IP5 Cooperation

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The need for IP5 cooperation The need for IP5 Cooperation

Patent filings at IP5 Offices

0

250 000

500 000

750 000

1 000 000

1 250 000

1 500 000

1 750 000

2 000 000

2 250 000

2000 2001 2002 2003 2004 2005 2006 2007 2008 2009 2010

EPO

USPTO

JPO

KIPO

SIPO

2010: Provisional estimates by CO

Global patent filings rising continuously, especially Chinese applications

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Perspectives for China and its patent system

Trends in the 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

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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)

IP5 Vision

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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)

IP5 Concept

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Progress WG2 - "IT-related Business Processes"

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

Timeliness

19m

EPO

JP-FIRST

40m

6 months 26m. 47m

KIPO USPTO JPO

22 m.

JPO

27m 38m 60m

EPO USPTO JPO

40m

KIPO

Priority DateOffice of First Filing

Office of Second Filing

12 months 18m

SIPO

SIPO

24m.

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Progress WG2 - "IT-related Business Processes"

• 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

Patent Cooperation Treaty (PCT)

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Progress WG2 - "IT-related Business Processes"

• "PPH", both National and PCT - applicant may request rapid examination at a OSF on presenting initial positive results from OFF

=> 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

Patent Prosecution Highway (PPH)

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Progress WG2 - "IT-related Business Processes"

– 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 • "Fit for purpose" level of MT quality defined for patent processes• In parallel, EPO working together with Google to improve Machine translation of European

and Asian languages

Better access to world's prior art documentation

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Progress WG2 - "IT-related Business Processes"

– 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

Sharing of search and examination results

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Progress WG2 - "IT-related Business Processes"

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!

Importance of improved international collaboration

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Need more information?

www.epo.org

Thank you for your attention!nmorey@epo.org

www.fiveipoffices.org