SDOs and Patent Offices : Interface improvement DOCUMENT #: GSC13-IPR-09 FOR: Presentation SOURCE: EPO AGENDA ITEM: 10 CONTACT(S): Dr. Michel Goudelis SDOs and Patent Offices : Interface improvement Dr Michel Goudelis, Director Telecommunications, EPO GSC-13, July 2008 Boston, USA

Introduction The issue of ICT Standards is becoming a priority area for EPO's external relations policy. In September 2006 we initiated a new phase of our encounter with the ICT-standards world. The reason is that in the field of ICT Standards strengths and weaknesses of the patent system are magnified.

Tensions are appearing Rising tensions through competing business models but also because of geopolitical reasons Increased scrutiny "from outside": competition authorities, politics, courts, now also IP institutions (see new debate at Standing Committee on Patents of WIPO) Principal problem: IPR policies of most SDOs are confronted with new challenges As expression of the challenges in the governance of the global knowledge economy

Internal measures Increased awareness (reaching at highest level) Technology watch in this particular field (resource planning) Supply additional resources in the following areas Documentation (standards related documents: acquisition and processing) Examination: additional training systematic links with technical committees of SDOs Special services for SDOs (landscaping, patent searches) ?

Standards related documents Access to all non-confidential technical documents (standards, temporary, drafts, contributions, ...) Technical field (publishing working group) on each document Effective publication date of submitted contributions Clear dissemination policy

Non-confidential technical documents Contributions First disclosure of new technical information shortly before or during a working group meeting Temporary - not by all SDOs Documents that are deleted after a certain period or if a new version is published Drafts - not by all SDOs Pre-versions of a standard, base for discussion and voting Standards Final document after discussions, agreement and voting

Non-confidential technical documents Why contributions? time (submission/publication date) (filing date) (non-public) Contr. 1 Contr. 2 Standard (C2) 18 Months Patent Appl. 1 Patent Appl. 2 Not every contribution (1, 3) becomes part of a standard Patent application is non-public up to 18 months after filing Contributions represent the first publication of new technology Contr. 3 1) Not every contribution becomes part of a standard. Thus, in standards not all new published technology is comprised. ->search in contributions 2) I is not possible for SDOs to search for patent application being in their first 18 Months as they are non-public. Thus, only PO can avoid granting patents on published technology. -> POs need to search in all non-confidential technical documents published by SDOs. 3) New technology is published in groups of SDOs in form of a contribution the first time. -> Contributions are THE essential part of SDOs' documentation for search by POs.

Working group information on all documents 300.000 documents Search Tool 1500 documents WG 1 Two tools to limit the amount of documents to search in to the subset that contains the searched technology are needed. The first is the limitation by technical areas. The easiest means to do so is to use the working group that edits a document. If the working group is precisely printed on all documents, standards, drafts, temporary documents and contributions, it allows to focus the search on the wanted technical sub-field. examples: 3GPP RAN WG4, IEEE-SA 802.11n, IETF MIP4 Also, this information is easily available as the whole documentation of a SDO is organised according to working group structure. Therefore, the editing or publishing working group shoul be printed on all SDO's documents

Effective publication date on all documents Search Tool Legal information 8.8. 2008 Second search tool and needed legal information: Effective publication date. As almost all SDOs publish their documents on a documentation server accessible by public or at least by working group members. If in principle any person or company can become member it is considered to be publicly available. Thus, the loading onto this documentation server is the effective publication date. For search, this is the second limitation criteria as the a contribution and the related patent application in most cases are timely related, too. public when up-loaded to documentation server

Effective publication date versus Meeting date Patent Appl. 7.2.2007 available before meeting Publication date vs meeting date  Risk of not considering contribution 1 as prior art and granting patent WG Meeting 20-21.2.2007 (filing date) time (publication date) Contr. C1 20-21.2.2007 (1.1.07) WG A Contr. C2 20-21.2.2007 WG B Standard (C1) 20.4.2007 WG ? On most contributions the meeting date is printed as the content of a contribution is discussed during the working group meeting following the publication on (up-loading to) the documentation server of the SDO. As in the example, usually contributions are up-loaded and thus became public days or even weeks before the meeting. Therefore, the date of being publicly available the first time should be printed on each contribution and on all other technical document published by a SDO.

Clear dissemination policy Non-confidential Confidential Working Group 1 8.8. 2008 Any SDO should clearly set out which document it consider to be confidential. A clear and easily accessible dissemination policy should be decided by any SDO. This is needed to provide legal certainty of whether a document is publicly available and, thus, could take away novelty or inventiveness of a patent application or not. It therefore defines the parts of SDOs' documentation the should be made available to POs.

External measures Bridging the two worlds: Resolution at GSC 12, encouraging SDOs "to cooperate with the relevant Patent and Trademark Offices to provide access to technical information for use by such Agencies that should help them improve the quality of patents being granted". Interface amelioration : Suggestion from ITU TSB Director's Ad Hoc Group on IPR to ITU to agree on a minimum standard for standards documentation including publication date, working group and further data to improve identification of prior art for patent examination