SDOs and Patent Offices : Towards a better interface Dr Michel Goudelis, Director Telecommunications, EPO GSC-14, July 2009 Geneva, Switserland

Introduction The issue of ICT Standards remains an important priority area for EPO's external relations policy. The reason is that in the field of ICT Standards, which usually include a large number of patents, a lot of public and political pressure exist and strengths and weaknesses of the patent system are magnified.

Rising tensions through competing business models but also because of geopolitical reasons Increased scrutiny "from outside": competition authorities, politics, courts Principal problem: IPR policies of most SDOs are confronted with new challenges; rules not clear and/or not sufficiently enforced These tensions could be seen as an expression of the broader challenges in the governance of the global knowledge economy. Tensions are appearing

Climate Change: new possible convergence Both the standardisation and the patent system are poised to play a positive role towards development and application of environmentally sound technologies (EST). COP15 (UNFCCC, Copenhagen, December 2009) is an important milestone ITU's declaration in Johannesburg and presence in Poznan of its Dep. Secretary General Joint project EPO-UNEP to assess role of patents, including establishing a database for EST-related patents and technologies (Art. 194 and 195 of AWG LCA negotiating text)

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 time (submission/publication date) (filing date) (non-public) Contr. 1 Contr. 2Standard (C2) 18 Months Patent Appl. 1Patent Appl. 2 Contr. 3 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 Why contributions?

Working group information on all documents 1500 documents documents Working Group 1 Search Tool

Effective publication date on all documents public when up-loaded to documentation server Search Tool Legal information

Effective publication date versus Meeting date available before meeting Publication date vs meeting date  Risk of not considering contribution 1 as prior art and granting patent (publication date) WG Meeting Standard (C1) WG ? time Contr. C WG B Contr. C (1.1.07) WG A (filing date) Patent Appl

Clear dissemination policy Working Group

Bridging the two worlds: Resolutions at GSC 12 and GSC 13, 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" still remain actual, need to be reaffirmed and further substantiated. External measures 1/4

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. ETSI recommendation to encourage the use of a document template to facilitate the work of patent examiners and to improve prior art identification. IEEE-SA documentation format definition and dissemination policies aligned as much as possible to the patent search needs. Bilateral Cooperation : in form of Memorandum of Understanding or Partnership Agreement between SDOs and Patent Offices ( EPO with ETSI, IEEE and ITU) in order to formalise and intensify cooperation. External measures 2/4

Contribute towards transparency: both in technical (up-to-date, informative databases) and structural (clear landscapes and boundaries) regard. Establish patent related services for SDO's such as: patent search services and patent landscaping services. Cooperation among major Patent Offices (IP5, composed of USPTO, JPO, KIPO, SIPO, EPO) for a common policy, including a common, standards-related documentation database. In cooperation with WIPO, long term include such documentation as PCT minimum requirement. External measures 3/4

Standardisation organisation could link their IP declarations databases to the public registers of the major Patent Offices, such that the included information (validity of application, scope of granted patents, patent family, etc.) is constantly updated and valid. Patent rules of standardisation organisations, in particular dissemination and confidentiality rules, should be more clear and more compatible with patent law. Proper functioning of both systems needs resolution of potential conflicts External measures 4/4