Jordanian Patent Office Experience in Cooperating with WIPO in the field of Search & Examination Prepared by Presented by Dr. Lina Haddad Zain AL Awamleh Head of Jordanian Patent Office Head of International Organizations & Agreements Unit Industrial Property Protection Directorate Ministry of Industry and Trade

Contents  Facts  History of cooperation between Jordanian Patent Office & WIPO in the Field of Search and Examination  How the cooperation between Jordanian Patent Office & WIPO in the Field of Search and Examination looks like nowadays  How the Office see the future of cooperation  Statistics

Facts

Fact # 1:  Jordan uses the examination system not the filing system, i.e. any patent application filed in the patent office should be examined in order to grant a patent or not. Quick note: all the filings in the office should be in Arabic and English language.

Fact # 2  The application in the Jordanian Patent office has one of two tracks: - Track one: First filing application (called local application) - Track two: Second filing application (called foreign application)

Fact # 3  Article (21) of the Jordanian patent regulations stipulates that “The Registrar may, for the purpose of examination, get assistance from the technical expertise available at any authority if he deems that necessary”. Therefore, the registrar can send the technical document to any academic local entity or to the World Intellectual Property Organization to help him in assessing the patentability. (novelty, inventive step, industrial applicability, in addition to unity).

Fact # 4  Jordanian Patent Office needs the help of WIPO in search and examination field for the following reasons: 1) Low number of patent examiners (4 examiners) 2) The examiners’ technical backgrounds don’t cover all the technical fields of filed patent applications 3) Shortage of financial resources 4) The only used databases for the purpose of search and examination are free databases

Fact # 5  For the track two (Second filing applications), Jordanian Patent Office make use of the search & examination reports of some patent office like; EPO and USPTO.

History of cooperation between Jordanian Patent Office & WIPO in the Field of Search and Examination

History  The history of cooperation goes back to year 2001 when WIPO offered the search and examination free service to the Jordanian Patent Office. We started afterwards sending the local filed applications to WIPO.  WIPO in it’s turn conduct searching for the prior art and examining the application substantively. After that, WIPO sends us back the results of search and examination.

History (Cont.)  In some cases, WIPO couldn’t examine the applications and they satisfy with sending us the prior art only. That’s because such applications are not well drafted (for example, the inventor was not able to convey the idea of his invention, or the claims are not written in the proper legal way, etc.)  In some other few cases, WIPO was not able to conduct the search even. That’s because the idea behind the application is vague and not clear enough.

How the cooperation between Jordanian Patent Office & WIPO in the Field of Search and Examination looks like nowadays How the cooperation between Jordanian Patent Office & WIPO in the Field of Search and Examination looks like nowadays

What the Office did to increase the benefit of WIPO offered service  The Office discovered that we need to improve the level of the applications sent to WIPO. Therefore; 1) The patent examiners qualifications in the field of searching and examination were improved. 2) Accordingly, the examiners were able to educate the inventors about drafting their application in the proper way.

What the Office did to increase the benefit of WIPO offered service (cont.) 3) The office increased the kinds of applications sent to WIPO; so they include nowadays; 1) forign applications without priority, and 2) applications with un-useful piriority to follow, 3) and the local applications 4) The office has created a new procedure that precedes the search and examination step. This procedure is called the preliminary substantive examination.

What is the Preliminary Substantive Examination  Through the preliminary substantive examination, the patent examiner validate the following points: 1. The application satisfies the condition of unity. 2. No mistakes has been made in the technical documents regarding language, numbering or other formalities related to the script of the technical documents. 3. The “claims” have been drafted in a proper way that defines the exact scope of protection. 4. The disclosure of the invention doesn’t contradict with any verified scientific rules. 5. The examiner will also conduct a preliminary search in the prior art databases in order to preliminary asses the novelty of the invention.

What is the Preliminary Substantive Examination /Cont.  The preliminary substantive examination might yield in one of two results: 1. either the application is complete regarding the defects tested in the preliminary substantive examination and in this case it will be diverted to the substantive examination 2. or the application is not complete regarding the defects tested in the preliminary substantive examination. In this case, the examiner will call the inventor/applicant to ask him to attend an official hearing to explain the examination details to him and how he shall amend his application based on those details.  If the inventor/applicant amends the application in the proper way, then the application is diverted to the substantive examination step.

Substantive Examination  Either the application is examined in the office by the patent examiners or sent to WIPO for ICSEI.  If the application was sent to WIPO, then the office wait the result from WIPO. However, this doesn’t mean that the result is binding. The Jordanian Patent Office could take by the result of the report or not. This depends on the patentability criteria according to the Jordanian patent law.  The ICSEI report is studied thoroughly by the Jordanian patent examiner. Therefore, the decision of granting or not is up to the Jordanian Patent Office.  So we can say that the role of WIPO in the examination procedure is counseling but not a decision maker.

What was the result of improvement?  The number of applications, that WIPO can send ICSEI report for, increased.  This in turn accelerated the procedure of examination.  WIPO is able to communicate easily with us about the sent applications. So WIPO can ask for certain and specified amendments for some of the applications.  The level of examination of the Jordanian patent application increased tremendously.

How the Office see the future of cooperation  More training for the patent examiners in the field of search and examination. This could be done through many ways like; training courses, mentorship with the examiners in the examining offices, etc.  Excellent quality of drafting for the patent applications sent to WIPO for examining.  More cooperation with WIPO in the field of data exchange. e.g. exachnage of legal status data

Statistics Granted Patents International Granted patents (Nationals) Applications by Internationals Applications by Nationals Year August

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