an epo strategy that focuses on quality and efficiency · grant philpott principal director...

Grant Philpott 4-6 November 2015 Principal Director Telecommunications & Computers (ICT)

An EPO strategy that focuses

on quality and efficiency

Patent Information Fair, Tokyo

European Patent Office 2

38 European member states

Belgium • Germany • France • Luxembourg

Netherlands • Switzerland • United Kingdom

Sweden • Italy • Austria • Liechtenstein

Greece Spain • Denmark • Monaco

Portugal • Ireland • Finland • Cyprus

Turkey • Bulgaria • Czech Republic

Estonia • Slovakia • Slovenia • Hungary

Romania • Poland • Iceland • Lithuania

Latvia • Malta • Croatia • Norway

Former Yugoslav Rep. of Macedonia

San Marino • Albania • Serbia

2 European extension states

Bosnia-Herzegovina • Montenegro

2 Validation states

Moldova, Morocco

The European Patent Organisation

European Patent Office

Total European patent filings1)

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1) Direct European filings under the EPC and international filings under the PCT.


Origin of European patent filings (2014)1)

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DE: Germany I FR: France I CH: Switzerland I NL: Netherlands I GB: United Kingdom

US: United States I JP: Japan I CN: P.R. China I KR: R. Korea I EPO: European Patent Organisation

Shares in Direct European filings under the European Patent Convention (EPC) and international filings under the Patent Cooperation Treaty (PCT).


Growing numbers of patent filings

In 2014 −274 000 filings at the EPO −2.3 million patent filings worldwide −1.45 million patent filings in China, Japan and Korea

Growing workload for patent offices and patent practitioners, often in multiple languages

The goal: improve efficiency and accuracy of our work

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EPO as a PCT Authority

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PCT procedure

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Receiving Office

International

Searching

Authority (ISA)

International

Preliminary

Examination

Authority (IPEA)

Patent

application

e.g. JPO

JPO allows you to choose

between JPO and EPO* as

ISA

Search report Application enters

the national phase

(called “European

phase” at EPO) –

at designated

offices for further

processing and

decision to grant or

refuse the patent. Int’l preliminary

examination

report

* if the application is filed in English


EPO as International Searching Authority

EPO ranks 1st in the world as ISA (80,742 international search reports in

2014, including 1700 for Japanese applicants)

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38.2

19

14.3

11.9

9.9

6.7

Search reports established in 2014 (%)

EPO

JPO

KIPO

SIPO

USPTO

Others


Why select the EPO for your PCT search?

One key to a strong patent is a good search

Quality reports recognised in many other offices

Dispensation of supplementary European search in

European phase if EPO was ISA If the EPO is your ISA, you can ask for the EPO to carry

out international preliminary examination too A further option if you choose the JPO as ISA: a “Supplementary international search” from the EPO

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Asian documentation

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Asian documentation

EPO databases cover nearly 100% of major Asian

countries (bibliographic and image data – 40 million

documents)

20 million full-text documents* – machine-translated into

English (*as of September 2015)

In 2014:

−43% of search reports included Asia documents

−22% of all citations from Asia (130 000 from Japan,

20 000 from Korea, 13 000 from China)

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Other important prior art resources

Non-patent literature

−26% of search reports cite non-patent literature

documents

For telecommunications and computers: standards

−access to ~3 million standards-related documents

organisations such as 3GPP, MPEG, IETF, ETSI, ITU,

IEEE-SA, OMA, IEC, etc

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Early Certainty from Search

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Early Certainty from Search

Early Certainty from Search aims at issuing search reports with written opinions within 6 months of receipt any EPO application (PCT or EP direct)

PACE – accelerated examination

For accelerated processing, our recommendation is:

combine PACE with a request to waive statutory delays

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Patent Prosecution

Highway (PPH)

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PCT-PPH (Patent Prosecution Highway)

Fast Track Examination of Applications

EPO work products can be used at other PPH Offices (IP5 + CA,MX,SG,IL)

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PCT search and/or examination reports produced by EPO accelerate

applications at:

JP US KR CN CA MX SG IL

EP


Unitary patent

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Current situation: after grant, European patents become a bundle of national patents

Filing

Search /

Exam Grant

("B1" doc)

Opposition

Limitation /

Revocation

Central EPO procedure

• Must be filed within 9

mths of grant

• Outcome: Patent

revoked, maintained or

amended ("B2" doc)

• Filed by proprietor at

any time after grant

• Outcome: Patent

scope limited ("B3"

doc) or patent revoked

New with EPC 2000

(13 December 2007)

Country 1

Country 2

Country 3

Country 4

Country 5 Country 6

Country 7

Country 8

Country 9 Country 10

Country 12 Country 11

Country 13

Each member state sets its own

rules for EP patents to enter force

in that state:

• annuity levels and collection

• translation requirements

• invalidity proceedings in national

courts

When the unitary patent becomes reality ...

Filing

Search /

Exam Grant

("B1" doc)

Opposition

Limitation /

Revocation

• Must be filed within 9

mths of grant

• Outcome: Patent

revoked, maintained or

amended ("B2" doc)

• Filed by proprietor at

any time after grant

• Outcome: Patent

scope limited ("B3"

doc) or patent revoked

New with EPC 2000

(13 December 2007)

Country 1

Country 2

Country 3

Unitary patent

As before for non-participating

countries

A single patent for participating

countries


Unitary Patent Package

Unitary patent will come into force once 13 member states (including Germany,

France and UK) have ratified the Unified Patent Court Agreement (so far, 8

ratifications)

Unitary patent relevant for: 26 member states (all EU member states with the

exception of Croatia and Spain)

Unified Patent Court: specialised patent court with jurisdiction covering the

infringement and revocation of classic EP patents and unitary patents of 26

member states

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Unitary patent Unified Patent

Court


When will it all start?

European applications already "in the pipeline" today might

be given unitary effect if granted after the system starts

Minimum of 13 states − including France, Germany and the

United Kingdom − must ratify the agreement on a Unified

Patent Court

First unitary patents will cover only the states which have

ratified the agreement, then more as states accede

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Concrete benefits of the unitary patent

Protection in one single step for the 26 member states

Simplified registration procedure instead of 26 different validations

Centralised and cost-effective renewal fee payment (“True Top 4”

proposal)

No post-grant translation required (after initial transitional period)

Centralised register for unitary patent protection maintained by the

EPO

Uniform litigation system ensuring greater legal certainty

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Register of unitary patent protection

Centralised register for unitary patent protection maintained by the

EPO

In new section within the existing European Patent Register

Will record all essential details such as payment of renewal fees,

lapses, etc

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Patent information

at the EPO

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Global nature of patent information

EPO’s task is

Completeness – making as much data as possible available

Usability – in a form that users can understand

Up-to-date data – available as quickly as possible after publication

Correctness – best possible quality and reliability of data

A global effort dependent on co-operation with all major offices

(Japan, China Korea, United States)

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Cooperative Patent Classification (CPC)

A refined version of the International Patent Classification (IPC)

Launched in 2013 by the EPO and USPTO

China, Korea, Brazil now on board. Russia to start classifying in

CPC beginning 2016

Twelve patent offices in Europe also use or will use CPC for

classifying their documents

Statistical concordance lists now available for CPC-to-FI,

and FI-to-CPC

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Patent Translate

Breaking down the language barriers to patent searching

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EN

DE

FR

EN

25 languages

of EPO

member

states

EN

RU

JP

KR

CN

32 languages covered.

Available in Espacenet,

European Patent Register

and other EPO services


Global Dossier

Access to patent files (the “file wrapper”) in a federated manner for

all applications in the five major offices pertaining to an invention

Allows users to access all available information about all

applications and patents in the participating offices

Available via European Patent Register and Espacenet

Machine-translation in English of the documents in Chinese,

Korean or Japanese

Considerable savings possible on file inspection costs

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Global Dossier

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Office Documents in Global Dossier

EPO Patent applications filed on or after 1 June 1978

JPO Patent and utility model applications filed after 2003

PCT international applications entering the national

phase in Japan after 2005

KIPO Patent and utility model applications filed from

January 2000 onwards

SIPO Patent applications filed on or after 10 February

2010

USPTO Patent applications filed from January 2003

onwards


Patent information – conclusions

CPC – easier to target your search

Patent Translate – access to more documents in more languages

Global Dossier – full information on patent application in the major

countries

Centralised data (EPO databases) and decentralised data (Global

Dossier) available according to your needs

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Today’s users are asking for

− more sophistication

− better quality

− better information on quality

− centralised AND decentralised data

− excellent tools

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The EPO’s promise

− to host as much data as possible in the best quality

− to make it as widely usable as possible

− to provide full information on the data

− to continue to network as much data as possible (like Global

Dossier)

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European Patent Office 33

EPO 2014 Annual Report:

http://www.epo.org/about-us/annual-reports-statistics/annual-report/2014.html