The Big Five Working Together
Article from our Winter 2008-2009 edition of InsideIP.
Many companies file patent applications for the same invention in more than one country and the patent offices in those countries independently perform search and examination work for the same invention. It is widely appreciated that, if the work were shared between patent offices, the examination procedures could be made more efficient and patents could be granted sooner and with less work having been carried out.
With this in mind, the heads of the European Patent Office (EPO), the Japan Patent Office (JPO), the State Intellectual Property Office of the People’s Republic of China (SIPO), the Korean Intellectual Property Office (KIPO) and the US Patent and Trademark Office (USPTO) met to discuss a worksharing initiative in October 2008.
The five intellectual property offices announced the adoption of a vision statement “The elimination of unnecessary duplication of work among the offices, enhancement of patent examination, efficiency and quality, and guarantee of the stability of patent right”. They also provided details of a cooperative framework in the form of ten Foundation Projects. The projects were developed by the five patent offices to harmonise the search and examination environment of each office. The projects are meant to make information-sharing easier and more desirable by enhancing the quality of patent searches and examinations and by building mutual trust in each other’s work.
It is expected that the work-sharing initiative will reduce the backlogs of patent applications in the patent offices and shorten the pendency period. The offices believe that delays in granting patents hinder the promotion of innovation, which is an intrinsic function of the patent system.
Each office will oversee the implementation of two Foundation Projects. The EPO will take the lead in developing a common documentation database with relevant patent and non-patent literature from around the work to be used by Examiners when performing prior art search. The EPO will also take the lead in developing a common approach for a Hybrid Classification for patent documents. The USPTO is responsible for developing a common approach to sharing and documenting search strategies and common search and examination support tools to enable Examiners to understand and reuse each other’s work. The JPO will take the lead in developing a common application format for the five offices and providing common access to search and examination results and to priority documents. The KIPO will be in charge of devising a common training policy for examiners and developing mutual machine translations to help the offices overcome language barriers. Finally, the SIPO will be responsible for developing common rules for examination practice and a common statistical parameter system for examination.
In addition to providing significant benefits for the patent offices, we expect that the collaboration will result in the harmonisation of the information required from the applicant and the objections raised by the different patent offices, which in turn will reduce costs and increase the speed of patent prosecution. The heads of the five offices are meeting again in 2009, and we will keep you informed of developments.