ACTING FOR THE IP PROFESSION WORLDWIDE State of Play and Expectations in Substantive Patent Law Harmonisation: IP5, the Global Dossier and e-PCT Bastiaan Koster

ACTING FOR THE IP PROFESSION WORLDWIDE 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 WORLDWIDE 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 WORLDWIDE 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 WORLDWIDE  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 WORLDWIDE  Key Projects Procedural Harmonisation One Portal Dossier Global Dossier The Five IP Offices (IP5)

ACTING FOR THE IP PROFESSION WORLDWIDE Patent Law Harmonisation

ACTING FOR THE IP PROFESSION WORLDWIDE 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 WORLDWIDE  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 WORLDWIDE  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 WORLDWIDE  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 WORLDWIDE  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 WORLDWIDE  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 WORLDWIDE  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 WORLDWIDE 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 WORLDWIDE  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 WORLDWIDE The Global Dossier

ACTING FOR THE IP PROFESSION WORLDWIDE  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 WORLDWIDE 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 WORLDWIDE Global Dossier – Concept Diagram

ACTING FOR THE IP PROFESSION WORLDWIDE  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 WORLDWIDE OPD - Example Workflow

ACTING FOR THE IP PROFESSION WORLDWIDE From OPD to Global Dossier 23 API Services OPD Services Cross Filing Services Global Payment Services Public Access Services Collaboration Services Worksharing Services USPTOEPOJPOKIPOSIPO WIPO CASE ASEANIsraelRussiaOthers IP Offices: “Virtual” Database Stakeholders Patent Examiners Industry Groups Applicants Public and 3 rd Parties Law Firms Other IP Offices

ACTING FOR THE IP PROFESSION WORLDWIDE Examiners Facilitate work sharing Improve quality Increase uniformity and potential harmonisation Global Dossier - Advantages Applicants 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 WORLDWIDE  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 WORLDWIDE Thank You Bastiaan Koster, FIPCI President and South African Patent Attorney E mail: 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 WORLDWIDE