2010 WIPO General Assembly

2010 WIPO General Assembly The IP5 Mary Critharis Senior Patent Attorney Office of External Affairs United States Patent and Trademark Office www.uspto.gov

IP5 EPO, JPO, KIPO, SIPO, USPTO Brief History of the IP5 Objectives Governance United States Patent and Trademark Office www.uspto.gov 2

Brief History of IP5 Pre 2007 Between 1985 and 2006, WIPO estimated that the number of patent applications filed world-wide grew from 884,400 to nearly 1.76 million. In 2006, the EPO, JPO, KIPO, SIPO, and USPTO received over 70% of all patent applications filed world-wide. United States Patent and Trademark Office www.uspto.gov 3

Brief History of IP5 2007 The IP5 (EPO, JPO, KIPO, SIPO,USPTO) held their first meeting in Hawaii. United States Patent and Trademark Office www.uspto.gov 4

Brief History of IP5 2008 The deputy heads of the IP5 Offices met in Alexandria, Virginia IP5 Vision drafted IP5 Foundation Projects drafted United States Patent and Trademark Office www.uspto.gov 5

Brief History of IP5 2008 Second Heads of Offices Meeting held in Jeju, Korea Finalized the IP5 Vision 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. United States Patent and Trademark Office www.uspto.gov 6

Brief History of IP5 2008 Second Heads of Offices Meeting held in Jeju, Korea Agreed on 10 Foundation Projects 1. 2. 3. 4. 5. Common Access to Search and Examination Results Common Application Format Common Hybrid Classification Common Documentation Database Common Examination Practice Rules and Quality Management United States Patent and Trademark Office www.uspto.gov 7

Brief History of IP5 2008 Second Heads of Offices Meeting held in Jeju, Korea Agreed on 10 Foundation Projects 6. Mutual Machine Translation 7. Common Search and Examination Support Tools 8. Common Approach to Sharing and Documenting Search Strategies 9. Common Statistical Parameters for Examination 10. Common Training Policy United States Patent and Trademark Office www.uspto.gov 8

Brief History of IP5 2009 Formed Working Groups WG1: Common Hybrid Classification WG2: IT-Supported Business Processes Common Documentation, Search and Exam Tools, Sharing and Documenting Search Strategy, Common Application Format, Mutual Machine Translation, Common Access Tools WG3: Examination Practice-Related Projects Common Training Policy, Common Examination Practice Rules and Quality Management, and Common Statistical Parameters United States Patent and Trademark Office www.uspto.gov 9

Brief History of IP5 2010 Third Heads of Offices Meeting held in Guilin, China Approved the resources requirements Invited acceleration proposals from the Working Groups United States Patent and Trademark Office www.uspto.gov 10

Brief History of IP5 2010 Continuing implementation of 10 Foundation Projects Preparing for Fourth IP5 Heads of Office meeting to be held in 2011 in Japan United States Patent and Trademark Office www.uspto.gov 11

IP5 Objectives 1. Reduce search and examination backlog 2. Enable examiners to search all relevant prior art 3. Reduce classification backlog 4. Facilitate applicants to apply for patent protection within IP5 5. Develop mutual trust among IP5 examiners United States Patent and Trademark Office www.uspto.gov 12

IP5 Objectives 6. Promote the utilization of the search and examination results from other offices 7. Provide easy access to the search strategies of other offices 8. Establish transparent examination practices and performance measures 9. Promote further digitalization of each office based on international standards United States Patent and Trademark Office www.uspto.gov 13

IP5 Governance United States Patent and Trademark Office www.uspto.gov 14

IP5 Common Hybrid Classification Niclas Morey, Director, IP5/Trilateral Affairs and Int. Org. 23 September 2010 15

Common Hybrid Classification Project Goal: Make the IPC really usable by all offices The wish list: Level of detail Coverage Consistency of use 16/8

How does it work? IPC per field, select best existing local scheme (ECLA, FI, USPC best practice of KIPO and SIPO) Agreement beforehand Move finer subdivisions into IPC ECLA G10L 17/8

Progress to date 2009 / 2010 First version of CHC Operation Procedures (CHC-OPS) the rules of the CHC game 5 Pilot projects started in Nov. 2009 and Feb. 2010 proceeding according to plan sixth pilot project agreed in June 2010 3 Pilot projects have already reached IP5 scheme agreement forwarded to WIPO for implementation in the IPC 18/8

Proposed next steps To be initiated at next WG1 meeting (11-15 October) Evaluation of six pilot projects to facilitate future development of projects Investigation of scheme mapping tools Development of quality assurance procedures for ensuring consistent classification between offices Development of approaches to reduce huge effort needed 19/8

IP5 Common Documentation Niclas Morey, Director, IP5/Trilateral Affairs and Int. Org. 23 September 2010

Common Documentation's Objective Define a common documentation set representing an extensive technical prior art source for patent and nonpatent literature, that will be accessed and searched by examiners at all IP5 Offices. 21/34

Common Documentation Content: Achievements 2009 / 2010 and next steps The common document dataset for patent and non-patent data shall enable examiners at each IP5 Office to access and search the same resources available to all IP5 partners. Exchange of detailed resource matrix of patent and non-patent resources completed Generic definition agreed Proposals made for a detailed content definition, prioritisation mechanism, and Memorandum of Understanding to support Common Documentation's enforcement Agreement expected by end of 2010/beginning 2011 Common procurement to be explored 22/34

Authority List Achievements 2009 / 2010 and next steps List of all patent documents issued by a patent office / organisation per type and level of publication (kind code A, B, etc). Advantage: verify completeness (quality) of available IP5 documentation kind code publication number + publication date priority number classification data Detailed proposal to be made and agreed upon by end of 2010 Enforcement to happen progressively 23/34

Medialess exchange Achievements 2009 / 2010 and next steps Medialess data exchange will enable updating of databases searched by IP5 examiners in a standardized and efficient way. Define standards of document formats (publication numbers, priority numbers) Define standardisation on data packaging Common quality standards (timeliness, correctness and completeness) Develop web services for simplified access and exchange mechanisms 24/34

経済産業省 特許庁 Japan Patent Office Common Application Format Progress and next steps Japan Patent Office Geneva, 23 September 2010

経済産業省 Common Application Format 特許庁 Japan Patent Office Vision Acceptance of domestic and PCT applications in Common Application Format (CAF) to make filing procedure for multiple countries easier. Applications are filed with Offices electronically or digitized (XML format) by the Office of First Filing (or Receiving Office) at an early stage Procedures following the filing of an application (i.e., office actions, amendments etc.) are processed and the applications are published in XML format at each Office 26

経済産業省 Common Application Format 特許庁 Japan Patent Office Progress to date The EPO, JPO and USPTO started acceptance of CAF in January 2009 The KIPO started acceptance of CAF in January 2010 Exchange of information regarding internal digitization processes for patent granting 27

経済産業省 Common Application Format 特許庁 Japan Patent Office Proposed next steps Consideration of the legal issues to adapt CAF agreement. Discussion on draft revision of CAF agreement that includes Korean and Chinese heading. Consideration of further XML utilization for enhancement of electronic processing of applications. 28

経済産業省 特許庁 Japan Patent Office Common Access to Search and Examination Results Progress and next steps Japan Patent Office Geneva, 23 September 2010

経済産業省 One Portal Dossier & PDX/DAS 特許庁 Japan Patent Office Vision The One Portal Dossier A service that can provide access to all dossier information of patent family applications Each office can develop and use its respective interface as a platform reflecting its own needs PDX/DAS Provide online Priority Document exchange (PDX) Create a standardized PDX (XML based) file format for smoother exchange and utilization of priority documents 30

経済産業省 One Portal Dossier 特許庁 Japan Patent Office One Portal Dossier (Image) Input Application Number (Priority Number, Application number or Publication Number is available.) JP2005-008213 OK 1. All Documents 2. Application Documents EPO JPO App. No. Pat. No. ****** ****** ****** Date Documents App. No. Pub. No. 17/Sep/2010 **/**/**** ***** ******** 4. Applicant s Response 3. Office Actions 5. Citation KIPO App. No. Pat. No. Pat. No. ****** ****** ****** Date Documents Date Documents ***** KR 16/Sep/2010 ***** JP Pub. No. EN **/**/**** 7. Patent Family (Except for IP5) SIPO ****** ****** ****** Pub. No. 6. Classification ****** ****** ****** App. No. Pat. No. ****** ****** ****** Date Documents Date Documents **/**/**** **** **/**/**** ********* **** App. No. Pub. No. Pat. No. EN USPTO CN EN Pub. No. **/**/**** 31

経済産業省 One Portal Dossier 特許庁 Japan Patent Office One Portal Dossier (Image) 1. All Documents 2. Application Documents EPO JPO App. No. Pat. No. ****** ****** ****** Date Documents App. No. Pub. No. 17/Sep/2010 **/**/**** ***** ******** 4. Applicant s Response 3. Office Actions 5. Citation KIPO App. No. Pat. No. Pat. No. ****** ****** ****** Date Documents Date Documents ***** 16/Sep/2010 ***** JP Pub. No. EN Examination Report Reason: 1. The following documents (D1/D2), of which D1 is considered to. D1= EP-A-0709779 D2= Yasuda et. al, Color Still Picture Sub-Division Coding International Standards, Journal of the Institute of Image Electronics Engineers of Japan, Japan, December 25, 1989, Vol.18, No.6, P.398-407 2. Lack of novelty, Articles 52(1) and 54 EPC: The present applications does not comply with the requirements **/**/**** 7. Patent Family (Except for IP5) SIPO ****** ****** ****** Pub. No. 6. Classification KR EN USPTO ****** ****** ****** App. No. Pat. No. ****** ****** ****** Date Documents Date Documents **/**/**** **** **/**/**** ********* **** App. No. Pub. No. Pat. No. CN EN Pub. No. **/**/**** Citation Information Classification Information EPO: 1. EP 0709779 A 2. Yasuda et. al, ECLA: 1. H01L 21/23D1A 2. G03B 3/00A2B USPTO: 1. US 2000-325675 A 2. US 2001-292215 A 3. EP 0709779 A USC: 1. 312/06 2. 215/09 3. 21/234 WIPO: 1. US 2001-292215 A 2. EP 0709779 A Patent family Except 5 offices DE 100000 A FR 100000 A FI : 1. H01L 21/23, 101@A 2. G03B 3/00@Z IPC: 1. H01L 21/23 32

経済産業省 One Portal Dossier 特許庁 Japan Patent Office Progress to date Available data to be exchanged through Phase1 of OPD was identified Proposed next steps Consideration of the specification of Service Interface for OPD Phase1 Consideration of rules concerning traffic volume, data codes etc. to be exchanged 33

経済産業省 PDX/DAS 特許庁 Japan Patent Office Progress to date Current status of PDX/DAS usage was reported Consideration of the WIPO DAS as a desirable avenue for the future PDX Proposed next steps Consider improvement of PDX/DAS procedure Consider XML standardization for PDX 34

Common Training Policy and Mutual Machine Translation Jung-A Oh Senior Deputy Director International Cooperation Division Korean Intellectual Property Office - 35 -

Common Training Policy Project goal To build trust among examiners and to provide applicants with reliable, high-quality examination results To provide examiners with effective training, especially on any new examination practices introduced as a result of the implementation of other foundation projects - 36 -

Common Training Policy Cross-participation Progress to date Enhancement of mutual understanding between offices through cross-participation in each other s training courses Office Date Course Search expert training: mechanical Training for new examiners: course A Search expert training: chemical/it JPO Mar 8-11 (4 days) EPO Jun 4 to Jul 6 (6 weeks) JPO Jun 17-22 (4 days) USPTO Jul 6 to Aug 2 (4 weeks) Examination overview KIPO (4), EPO (2), JPO (1), SIPO (3) JPO Sep 13-16 (4 days) Search expert training: mechanical SIPO (2) - 37 - Participants KIPO (2), EPO (2) KIPO (1), SIPO (2) KIPO (4)

Common Training Policy E-learning portal Progress to date The IP5 e-learning portal is being utilized so that the content of each office s training courses can be shared online. - The existing 22 e-learning courses are being shared (EPO 12, JPO 4, USPTO 6). - KIPO is preparing an e-learning module on patentability. - SIPO is working to upload two e-learning modules onto the portal by the end of 2010. - 38 -

Common Training Policy Examiners workshop Progress to date Search practices are the focus of the second workshop in 2010. KIPO hosted the first IP5 examiners workshop in 2009. Live Search - 39 -

Common Training Policy Proposed next steps To collect cross-participants' feedback via surveys for a comparison of the different training approaches To monitor the progress of other foundation projects and investigate the necessity of developing training materials that can be used to implement the changes that result from the achievements of the other foundation projects To assess the achievements of the IP5 Examiners Workshop and consider how to utilize the workshop in the future - 40 -

Mutual Machine Translation Project goal To help users better understand and use the patent gazettes and search and examination information of other offices To improve the quality of existing machine translation services at each office to conduct joint quality assessment of machine translation services at each office each year to upgrade the machine translation systems through feedback obtained from a review of machine-translated documents - 41 -

Sample Selection and Quality Assessment Each office selects 80 crossfiled applications 80 applications cross-filed to IP5 Section A 10 Section B 10 Section C 10 Section D 10 Section E 10 Section F 10 Section G 10 Section H - 10 JPO, KIPO, SIPO extract 800 sentences 10 sentences per application Title 1 abstract sentence 3 claim sentences 5 description sentences Joint quality assessment Send extracted sentences to KIPO KIPO prepares assessment sheets by consolidating samples Assessment sheets of 2400 machine-translated sentences Sends assessment sheets to assessors - 42 -

Draft Guidelines for Error Review Error review and feedback The JPO, KIPO, and SIPO will each extract 400 machine-translated sentences from recently published official gazettes and send them to the EPO and USPTO MT documents Random extraction 400 MT sentences MT documents Random extraction 400 MT sentences Reviewers - 43 - MT documents MT documents Random extraction 400 MT sentences

Mutual Machine Translation Progress to date A method of MT quality assessment has been established: -It includes technical fields (sub-classes) to be assessed, amount of sentences, assessment scale, etc. Guidelines for the error review feedback process are being discussed: -KIPO has prepared draft criteria based on input from other offices. -- 44 44 --

Mutual Machine Translation Proposed next steps To implement MT quality assessment (by 31 Dec 2010): - To assess the quality of existing MT services - To define the fit for purpose quality and analyze the gap between the current quality and fit for purpose quality. To establish guidelines and a method of reviewing the feedback process: - To execute a pilot project of the review feedback process (by 31 Dec 2010) To implement the error review process (2011). To upgrade the MT systems (from 2012). - 45 -

Thank you! Comments and questions: jaoh72@kipo.go.kr - 46 -

IP5 Foundation Projects Common Examination Practice Rules and Quality Management State State Intellectual Intellectual Property Property Office Office of of the the People s People s Republic Republic of of China China 23 September 2010 23 September 2010

IP5 Foundation Projects Common Examination Practice Rules and Quality Management State State Intellectual Intellectual Property Property Office Office of of the the People s People s Republic Republic of of China China 23 23 September September 2010 2010

Summary of the Project Developed the common examination practice rules and quality management system within the IP5 offices to enable them understand and utilize one another s examination practice rules Exercise patent examination at basically same quality level, and build better mutual trust in quality and serve work-sharing Elevate satisfaction of applicants and the public towards operation efficiency and quality of the patent system and build better trust based on more unified standards of processing and more stable and unified examination results of the same application before the offices. 49

Progress to date Basic items of search rules agreed upon in WG3 in December 2009,Beijing. Search practice rules survey conducted in May 2010. First version of comparative study report and the model search practice rules drafted. Basic items of procedure rules proposed in June 2010 and comments received from EPO,JPO,USPTO, and KIPO in July 2010. Quality management survey conducted in June 2010 and responses received from EPO,JPO,USPTO, and KIPO in July 2010. 50

Next steps Common Examination Practice Rules and Quality Management Foundation Project to continue with remaining tasks as defined and agreed upon in short-term goals 2010-2011 Complete detailed planning and resource requirements for 20122013 Conduct comparative study and develop quality review standards and evaluation standards related to substantive examination. 51

Common Common Statistical Statistical Parameters Parameters for for Examination Examination State State Intellectual Intellectual Property Property Office Office of of China China September September 2010 2010 52

Introduction Arrangement, definition and computing method of statistical parameters for examination differ from one office to another Difficulties incur when offices make references to relevant parameters Inadequacy of statistical parameters for examination with regard to work-sharing Disadvantageous either to common assessment of the actual worksharing effect, or to providing data information and decision-making support 53

Goals Coordinate key differences of statistical parameters for examination amongst offices Improve parameters for work-sharing Establish common statistical parameters for examination Comparatively analyze related data on the basis of unified statistics Raise statistical efficiency and analytical capability Constraints: Different national/regional laws and regulations, examination rules and procedures to be followed by each office be fully respected 54

Progress to date Approved project mandate Agreement on short-term goals, task breakdown, and resource planning for 2010-2011 Survey of statistical parameters at IP5 IP5 Parameter Dictionary Entry items for version 1 decided Draft version 1 finished 55

Proposed next steps Comparative study on parameters Preliminary selection and design of CSPE Preliminarily define the initial framework and detailed items of the common statistical parameters for examination, applicable to all offices and beneficial to work-sharing Pilot project Implement the pilot with the specific parameters on the basis of the common statistical parameters for examination preliminarily defined Model statistical parameters for examination 56

Common Approach to Sharing and Documenting Search Strategies United States Patent and Trademark Office www.uspto.gov

Overview Provide examiners with the ability to document the approach and strategy associated with the search of a patent application so that it can be re-used by examiners in other offices, producing equivalent results building confidence among the offices to promote worksharing Determine the scope and content of the search record so that: Minimal burden is placed on the first examiner Maximum benefit is provided to the second examiner United States Patent and Trademark Office www.uspto.gov 58

2009 Progress Mandates approved by the Heads of Office Formation of Working Groups to focus on detailed planning and implementation Working level meeting in November to collaborate with IP5 partners in moving the projects forward and reaching agreement on: 2010-2011 work packages and resource estimates High-level timeline for developing business needs and conducting recordation pilots United States Patent and Trademark Office www.uspto.gov 59

2010 Progress Defined the process for conducting current state analysis and developing IP5 minimum business needs Developed templates for each office to complete a search recordation inventory IP5 Offices have completed or are in the process of completing these templates Working level meeting held in June where the following was accomplished: IP5 Offices shared current search recordation practices IP5 Offices agreed to participate in a simple pilot as a first step in determining the scope and content of the search record United States Patent and Trademark Office www.uspto.gov 60

Next Steps Consolidation and prioritization of minimum business needs using completed search recordation inventories Final design, timeline and launch of initial pilot(s) Evaluation tools to support the pilot(s), such as a survey Detailed planning and resource requirements for 2012-13 United States Patent and Trademark Office www.uspto.gov 61

Common Search and Examination Support Tools United States Patent and Trademark Office www.uspto.gov

Overview Develop a common set of search tools and functions that enable examiners to produce equivalent results for each application that is examined, building confidence among the offices to promote worksharing Maximize the capabilities of existing search systems Provide all examiners with access to the same robust set of search features and functions United States Patent and Trademark Office www.uspto.gov 63

2009 Progress Mandates approved by the Heads of Office Formation of Working Groups to focus on detailed planning and implementation Working level meeting in November to collaborate with IP5 partners in moving the projects forward and reaching agreement on: 2010-2011 work packages and resource estimates High-level timeline for developing business needs and conducting search tools pilots Focus of pilots: Architecture/system performance issues Language barriers United States Patent and Trademark Office www.uspto.gov 64

2010 Progress Defined the process for conducting current state analysis and developing IP5 minimum business needs Developed templates for each office to complete a search tools inventory IP5 Offices have completed or are in the process of completing these templates USPTO created a video to demonstrate their current search tools (in final stages of development) Working level meeting held in June where the following was accomplished: IP5 Offices shared proposals for how to demonstrate search tools The Offices agreed to consider other options to increase awareness of their tools such as conducting training, participating in workshops, and sharing user manuals USPTO presented a high-level overview of potential search tools pilots United States Patent and Trademark Office www.uspto.gov 65

Next Steps Consolidation and prioritization of minimum business needs using completed search tools inventories IP5 Offices to demonstrate search systems Final design, timeline and launch of initial pilot(s) Evaluation tools to support the pilot(s), such as a survey Detailed planning and resource requirements for 2012-13 United States Patent and Trademark Office www.uspto.gov 66

経済産業省 特許庁 Japan Patent Office Communication Plan Japan Patent Office Geneva, 23 September 2010

経済産業省 Communication plan 特許庁 Japan Patent Office Vision Communication with internal and external stakeholders Co-ordination to maximise communication efforts Actions Sharing information on communication activities Side event during the WIPO General Assembly Meeting with users IP5 Website 68

Presentation of the IP5 Website Niclas Morey Director, IP5/Trilateral Affairs and Int. Org. Geneva, 23 September 2010

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Thank you for your attention. Any questions?