Patent Offices and SDOs cooperation development

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Patent Offices and SDOs cooperation development
Document No GSC17-IPR-06
Source European Patent Office
Contact Michel Goudelis, EPO (mgoudelis_at_epo.org) Ged Owens, EPO (gowens_at_epo.org)
GSC Session IPR WG
Agenda Item 5.1

• Dr Michel Goudelis,
• Director Telecommunications, EPO

• Ged Owens,
• Coordinator Public Policy,
• EPO

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Overview

• Importance of cooperation between patent and
  standardisation systems
• High quality of EPO patent examination process
• EPO cooperation with Standards Development
  Organisations
• Future outlook and next steps

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Importance of cooperation between patent and
standardisation systems

• More interaction between traditional technical
  areas
• especially incorporation of ICT into all aspects
  of life
• More competition and higher value of intangible
  assets
• Shorter life cycles, accelerated pace of
  technological development
• More sophisticated digital technology in
  Telecommunications, Audio Video and Electronics
• Increased competition in the Telecommunications
  market
• Standards linked more and more to patents

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Quality of EPO patent process

• EPO has considerable collections of patent and
  non-patent literature across many technical areas
• Standards documents acquired via public databases
  or through individual agreements with SDOs
• Specific needs of EPO led to agreements with
  providers and SDOs
• Patent Offices' main interest are early drafts,
  more than final resulting standards.

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Granting high quality patents

• Critical EPO requirements
• Patent applications must meet all patentability
  criteria, including novelty, inventive step, but
  also clarity and conciseness
• EPO should have efficient search services updated
  with the most pertinent patent documents, as well
  as published literature and standardisation
  documents, searchable as much as possible by a
  uniform search engine
• Entrusted examiners are aware of new technical
  developments
• Entrusted examiners (specialised in field) are
  aware of importance of standards documentation

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EPO Cooperation Agreements with SDOs

• In 2012 and 2013 EPO renewed MoUs with ETSI and
  IEEE-SA, widening the scope of cooperation in
  both new agreements.
• Cooperation Agreement in place with ITU since
  2011 cooperation intensifying
• First agreement concluded with IEC 2012 gives EPO
  access to IEC documentation for the purposes of
  the patenting process in all its phases
• Meetings and discussions with a number of
  international and national SDOs
• Contribution to international fora on
  interrelations between Patents and Standards
• Informing applicants and other patent system
  stakeholders of EPO approach

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Standards documents available for EPO examination

• Standards and contributions from
• 3GPP
• ETSI
• ITU
• IEEE--SA
• IETF
• To be added in 2013
• 3GPP2 Standards and contributions
• OMA Standards and contributions
• Cryptography and Data Security Standards and
  Directives (IACR later also USENIX, BSI, NIST,
  ARXIV), expected in 2013/2014

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Strategic directions for the cooperation with SDOs

• Promote and expand current policy concerning
  patents and standards
• Conclude agreements with further SDOs in priority
  areas, including new and expanding technologies
• Priority areas Telecommunications, Audio Video
  and Computer technologies
• Priorities in standards documents acquisition
  defined by the patent examination experts in
  technical fields
• Cooperate with SDOs to standardise format of
  standards documentation (bibliographic data for
  searching, XML format, templates) to increase
  efficiency and effectiveness of searches
• Promote linking of SDO essential patent
  declaration databases in real time to EPO
  publically available patent document databases,
  to increase overall transparency.

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Challenges for the EPO cooperation with SDOs

• Despite proliferation of IPR in standards and
  increased reference to standards in patent
  applications, approach by SDOs still varies
  widely
• Advantages of cooperation with some SDOs still
  not on favourable terms and conditions for EPO,
  despite a win-win situation
• Considerable cost of acquisition and processing
  of standards documentation and necessary
  bibliographic data for EPO
• Awareness of all stakeholders of importance, and
  status of standards documentation as relevant
  prior art

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Results of EPO cooperation with SDOs

• In many technical areas with high number of
  industrially and commercially important patent
  applications, a high proportion of pertinent
  prior art comprises standards documentation
• quality and legal security of granted patents in
  these areas without search in standards documents
  would not be acceptable
• Importance of standards documentation still
  increasing
• MoU and cooperation agreements make commitment to
  cooperation and exchanges irrevocable
• Legal security encourages innovators to
  participate with security in standards developing
  procedure

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Following Actions/Goals

• Extend and ameliorate cooperation with SDOs where
  agreements exist
• Establish new agreements where appropriate,
  especially in further ICT sectors and/or new
  important geographical areas
• Work with SDOs to standardise documentation to
  optimise efficiency and effectiveness of searches
  

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Supplementary Slides
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Key facts about the unitary patent

• Basic principles
• a European patent granted under the EPC
• unitary effect for the territories of the 25 EU
  member states currently participating, at the
  applicant's request
• co-existence with the existing European patent
  and national patents
• validated in one single administrative step by
  the EPO for all the participating states in the
  language in which it was granted
• language regime being finalised transition
  measures foreseen
• ObjectiveEuropean Council Presidency andEU
  Commission intend to havethe first unitary
  patent granted in 2014

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Advantages

• For inventors
• protection in one single step for the 25 states
  currently participating
• significant cost savings (translation,
  validation, administration)
• simplified validation procedure (instead of up to
  25 different procedures)
• simplified and more cost-efficient renewal
  procedure
• increased legal certainty due to uniform
  litigation system
• For Europe
• optimal protection in the participating states as
  a whole
• better framework conditions for innovative
  companies and organisations
• simplified European protection mechanism for
  companies from outside Europe
• improved competitiveness of the European patent

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The unitary patent as a European patent
Same grant procedure as for classic European
patent
Appeal proceedings
Refusal or withdrawal of application
Limitation/ revocation/ opposition proceedings
European patent application
UNITARY PATENT for the territories of the 25
participating states
At the request of the patent proprietor
Filing and formalities examination
Grant of European patent
Substantive examination
Search report with preliminary opinion
on patentability
The unitary patent replaces the individual
effects of the European patent in the 25
participating states
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