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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
ACTING FOR THE IP PROFESSION WORLDWIDEwww.ficpi.org
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
ACTING FOR THE IP PROFESSION WORLDWIDEwww.ficpi.org
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
ACTING FOR THE IP PROFESSION WORLDWIDEwww.ficpi.org
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
ACTING FOR THE IP PROFESSION WORLDWIDEwww.ficpi.org
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)
ACTING FOR THE IP PROFESSION WORLDWIDEwww.ficpi.org
Key Projects
Procedural Harmonisation One Portal Dossier Global Dossier
The Five IP Offices (IP5)
ACTING FOR THE IP PROFESSION WORLDWIDEwww.ficpi.org
Patent Law Harmonisation
ACTING FOR THE IP PROFESSION WORLDWIDEwww.ficpi.org
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
ACTING FOR THE IP PROFESSION WORLDWIDEwww.ficpi.org
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
Patent Harmonisation
ACTING FOR THE IP PROFESSION WORLDWIDEwww.ficpi.org
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
ACTING FOR THE IP PROFESSION WORLDWIDEwww.ficpi.org
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
ACTING FOR THE IP PROFESSION WORLDWIDEwww.ficpi.org
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
Procedural Harmonisation
ACTING FOR THE IP PROFESSION WORLDWIDEwww.ficpi.org
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
Procedural Harmonisation
ACTING FOR THE IP PROFESSION WORLDWIDEwww.ficpi.org
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
Procedural Harmonisation
ACTING FOR THE IP PROFESSION WORLDWIDEwww.ficpi.org
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
ACTING FOR THE IP PROFESSION WORLDWIDEwww.ficpi.org
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
ACTING FOR THE IP PROFESSION WORLDWIDEwww.ficpi.org
The Global Dossier
ACTING FOR THE IP PROFESSION WORLDWIDEwww.ficpi.org
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
ACTING FOR THE IP PROFESSION WORLDWIDEwww.ficpi.org
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
ACTING FOR THE IP PROFESSION WORLDWIDEwww.ficpi.org
Global Dossier – Concept Diagram
ACTING FOR THE IP PROFESSION WORLDWIDEwww.ficpi.org
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
ACTING FOR THE IP PROFESSION WORLDWIDEwww.ficpi.org
OPD - Example Workflow
ACTING FOR THE IP PROFESSION WORLDWIDEwww.ficpi.org
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
ACTING FOR THE IP PROFESSION WORLDWIDEwww.ficpi.org
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
ACTING FOR THE IP PROFESSION WORLDWIDEwww.ficpi.org
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
ACTING FOR THE IP PROFESSION WORLDWIDEwww.ficpi.org
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
ACTING FOR THE IP PROFESSION WORLDWIDEwww.ficpi.org