SDOs and Patent Offices : Towards a better interface

1
SDOs and Patent Offices Towards a better
interface

• Dr Michel Goudelis,
• Director Telecommunications, EPO

GSC-14, July 2009 Geneva, Switserland

2
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.

3
Tensions are appearing

• 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.

4
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)

5
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)

6
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

7
Non-confidential technical documents

• ContributionsFirst disclosure of new technical
  information shortly before or during a working
  group meeting
• Temporary - not by all SDOsDocuments that are
  deleted after a certain period or if a new
  version is published
• Drafts - not by all SDOsPre-versions of a
  standard, base for discussion and voting
• Standards Final document after discussions,
  agreement and voting

8
Non-confidential technical documents
Why contributions?

• 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

9
Working group information on all documents
300.000 documents

• Search Tool

1500 documents
WG 1
10
Effective publication date on all documents

• public when up-loaded to documentation server

11
Effective publication date versus Meeting date
Patent Appl. 7.2.2007

• available before meeting
• Publication date vs meeting date
• ? Risk of not considering contribution 1 as
  prior art and granting patent

(filing date)
time
(publication date)
Contr. C1 20-21.2.2007 (1.1.07) WG A
Standard (C1) 20.4.2007 WG ?
Contr. C2 20-21.2.2007 WG B
12
Clear dissemination policy
Non-confidential
Confidential
13
External measures 1/4

• 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.

14
External measures 2/4

• 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.

15
External measures 3/4

• Contribute towards transparencyboth 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.

16
External measures 4/4

• 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