acting for the ip profession worldwide state of play and expectations in substantive patent law...

ACTING FOR THE IP PROFESSION WORLDWIDEwww.ficpi.org

State of Play and Expectations in Substantive Patent Law

Harmonisation:IP5, the Global Dossier and

e-PCT

Bastiaan Koster


Trilateral Organisations Programme of co-operation in an effort to improve efficiency

of the global patent system

Patent Offices - USPTO, EPO and JPO• Began in 1983• Exchange of Examiners and other joint projects

Industry - AIPLA, IPO, BE, JIPA• Began in 2003• Provided industry and user input to discussions among the

Trilateral Patent Offices


Trilateral Organisations Joint Accomplishments

Common Application Format (CAF)• Patent application format using XML and tagging and

acceptable to all 3 Patent Offices

Common Citation Document (CCD)• Database having a collection of all references cited against

a family of patents

PPH and PCT improvements


The Five IP Offices (IP5) To improve quality and efficiency of the examination process

and to optimise work sharing opportunities between offices

Patent Offices - USPTO, EPO, JPO, KIPO and SIPO• Formed in 2008• Accounts for >80% of patent applications filed worldwide and

for 95% of all work carried out under the PCT

Industry - AIPLA, IPO, BE, JIPA, KINPA, PPAC• Began in 2012• Focused on cost savings, quality and backlog


Joint Accomplishments

Took over most of the projects of the Trilateral Patent Offices (which still meets annually)

Working on the Global Dossier

Established a Patent Harmonisation Experts Panel and addressing procedural harmonisation issues

Other projects include classification, quality etc.

The Five IP Offices (IP5)


Key Projects

Procedural Harmonisation One Portal Dossier Global Dossier

The Five IP Offices (IP5)


Patent Law Harmonisation


Patent Harmonisation

WIPO

Began discussions in 1990’s

Prepared a Substantive Patent Law Treaty (SPLT) in 2000’s

Passed a Patent Law Treaty (PLT) on non-substantive issues


Tegernsee Group USPTO, JPO, 4 European Countries (UK, FR, DE, DK) and EPO as

“convener” Addressed harmonisation of:

• 18 month publication;• Grace period;• Secret prior art; and • Prior user rights

Prepared questionnaires and gathered public input and issued final report



Topics requiring harmonisation:

• Enabling disclosure• Claims• Unity of invention• Right to a patent • Conditions of patentability• Definition of prior art• Declarations• Filing date/Priority date• Grace period



Patent Harmonisation Expert Panel (PHEP)

Established by IP5 Patent Offices and Industry IP5 to recommend subjects

Three topics chosen:• Citation of Prior art• Unity of Invention• Written description

Industry working on consensus position to present at next PHEP meeting

Procedural Harmonisation


Citation of Prior Art

• Currently each office requires forms or citing in application – a common form which can be used, uploaded and shared among Patent Offices will decrease burden

• Clarification also needed in acceptance of machine translations



Unity of Invention

• Patent Offices currently have different guidelines

• Studies are required to determine if offices are making different determinations

• If same standard is used, it is possible to have the first Patent Office that performs search/written opinion to make a binding determination

• Result would be one patent/invention in all countries



Written Description

• Require clarification on various terminologies used in the Patent Offices e.g. enablement, support, sufficiency of disclosure, clarity etc.

• Major differences in various areas, so may be most difficult to harmonise but may be most important

• Also dependent on different technical fields



ePCT Launched in May 2011 Online service for

Facilitating filing international applications under PCT Provides electronic access to files of PCT applications,

Two services: Public services - upload documents relating to an application; Private services – access and manage applications filed as from

1 January 2009 Third party observation system allows parties to submit

observations on prior art, which is made available to International Authorities and national offices


Seventh Session in Geneva, June 2014

IB generates a package containing all required bibliographical data and documents for national phase entry

Eliminates risk of transcriptional errors and reduces time

Option of possible centralised payment, which could reduce costs

ePCT – National Phase Entry


The Global Dossier


An integrated on line portal between all participating offices to simplify viewing and management of application filed in the IP5 offices

• Each country will have a portal, through which users can gain access into patent databases of other participating offices, and permit 2-way communication

• Allows access all available information about applications and use of electronic services of each office

• All information remains on each office’s own server, with access from each portal

Global Dossier


Each country portal will translate information into the language of that country

Currently only post publication information will be available to examiners, applicants and third parties

Working on pre-publication information for use by examiners and applicants

Global Dossier


Global Dossier – Concept Diagram


Two parts:• Passive part for global file accessibility• Active part for portal document submissions (e.g. cross

filings) Both part integrated using “one portal” One Portal Dossier (OPD) service providing IP5 file

wrapper data to IP5 examiners launched in July 2013 Currently, passive part developed by examiners are in JP,

KR, CN and EP In June 2014, EPO deployed the first tool leveraging the

OPD technology to display SIPO file wrapper data

Global Dossier


OPD - Example Workflow


From OPD to Global Dossier

API Services

OPD Services

Cross Filing Services

Global Payment Services

Public Access Services

Collaboration Services

Worksharing Services

USPTOEPO JPO KIPO SIPO WIPO CASE ASEAN Israel Russia Others

IP Offices: “Virtual” Database

Stakeholders

Patent Examiners

Industry Groups Applicants Public and

3rd PartiesLaw Firms Other IP Offices


Examiners

Facilitate work sharing

Improve quality Increase

uniformity and potential harmonisation

Global Dossier - AdvantagesApplicants

Monitor portfolio More uniformity in

patent coverage Reduce litigation

risk of inconsistent arguments

Reduce IP5 burdens

Reduce costs

Third Parties

Facilitate sharing Reduce litigation

costs Ease due diligence

options Reduce translation

burdens


IP5 and other offices are working aggressively on: System and procedural harmonisation and Substantive harmonisation

User input being sought through Domestic and regional consultation International Task forces and working groups

Involvement of FICPI

Conclusions


Thank You

Bastiaan Koster,FIPCI President and South African Patent

AttorneyE mail: [email protected]

Grateful acknowledgement to Samson Helgott (Katten Muchin Rosenman LLP, New York) and Alan J. Kasper (Sughrue Mion PPLC, Washington) for their helpful contributions

mailto:[email protected]

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