Global Business Solutions for Patent Prosecution

1. Symposium of Intellectual Property Authorities Global Business Solutions for Patent Prosecution Niclas Morey Geneva, 22 September 2011 Director International Organisations, Trilateral and IP5 European Patent Office

2. Contents 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)

3. The need for IP5 cooperation The need for IP5 Cooperation The global patent system faces important challenges: • filing levels increasingworldwide • 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

4. The need for IP5 cooperation The need for IP5 Cooperation Global patent filings rising continuously, especially Chinese applications

5. Perspectives for China and its 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 Trends in the Patent System 5

6. IP5 Vision 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)

7. IP5 Concept IP5 Concept Establishment of the appropriate infrastructure allowing for the greater integrationof 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)

8. Office of First Filing Priority Date SIPO EPO KIPO JPO USPTO JPO 24m. 47m 26m. 6 months 19m 22 m. JP-FIRST Office of Second Filing SIPO EPO USPTO KIPO JPO 12 months 27m 38m 40m 40m 60m 18m Progress WG2 - "IT-related Business Processes" Timeliness 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

9. Progress WG2 - "IT-related Business Processes" Patent Cooperation Treaty (PCT) • 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

10. Progress WG2 - "IT-related Business Processes" Patent Prosecution Highway (PPH) • "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

11. Progress WG2 - "IT-related Business Processes" Better access to world's prior art documentation • 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

12. Progress WG2 - "IT-related Business Processes" Sharing of search and examination results • 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

13. Progress WG2 - "IT-related Business Processes" Importance of improved international collaboration 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!

14. Need more information? www.epo.org Thank you for your attention! nmorey@epo.org www.fiveipoffices.org