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International Worksharing and its Perspective Inhong YEO (yinhong@korea.kr) yinhong@korea.kr International Cooperation Division

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Introduction Increasing Demand for Worksharing The number of multi-national patent applications is increasing due to globalization of business Duplicative works between IP offices are increasing Importance of consistency of examination results between IP offices is greatly recognized Contribution of subsequent filing to total application growth WIPO (2011) Patent Applications Blocs of Origin at KIPO

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Purpose of Worksharing What users and IP offices expect for work sharing Worksharing is the most important multi-office vehicle for user benefit regarding both pendency and quality Practical solution for reducing work load of IP offices by reducing duplicative work Reduced Pendency Quality & Consistency Duplication Reduction Use of other offices work (Search Info.) Reduction of additional top-up search Reference to the result of other offices

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Categorization of worksharing programs 1 st ~ 3 rd generation worksharing programs according to the manner of information handling between IP offices CategoryInfo. FlowWorksharingExamples 1 st Gen. OLE consults OEEs examination result PCT (67) PPH (06) OPD (13) 2 nd Gen. OLE consults OEEs examination result OEE expedites examination for worksharing JP-FIRST(08) FLASH (10) 3 rd Gen. OLE and OEE mutually shares information in a timely manner PCT CS&E(10) CoBOA(13) OEE OLE OEE OLE OEE OLE OEE: Office of Early Examination OLE: Office of Late Examination Categories of Worksharing

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International Worksharing Categories of Worksharing

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Examples of 1 st generation worksharing programs Duplicative work reduction and examination quality improvement of OLE through the consultation of examination result of OEE ProgramsParticipantsWorksharing ProcessStatus PCTConsultation of ISR by DO Implemented (67) PPH If OEE or ISA finds patentability, OLE or DO expedites the examination of the corresponding application Implemented (06) PCT-PPH Implemented (10) Vancouver Group Consultation of OEEs work output through WIPO-CASE system (UK, CA, AU) Implemented (08) ASPEC PPH style worksharing program between nine ASEAN countries Implemented (09) PROSUR Consultation of OEEs work output (nine South American countries) Implemented (11) ISA: International Search Authority DO: Designated Office 1 st Generation Worksharing

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ProgramsParticipantsWorksharingStatus PACE Automatic accelerated search for European patent applications without any priority claim Implemented (95) KR-RAPID Examiner of KIPO, as the OFF, expedites the examination according to applicants request Implemented (99) JP-FIRST Examiner of JPO, as the OFF, expedites the examination before the OSF starts the examination Implemented (10) FLASH USPTO examiners expedite examination and prepare a FA within approximately 3 months from notification that USPTO is OFF Pilot (10) Timeliness Strategy OEE provides prior art search result within 15 months from the earliest priority date Proposed (12) PCT 3.0 Use of prior art search result of NO for establishing PCT ISR(Int. Search Report) Proposed (13) Examples of 2 nd generation worksharing programs OEE expedites exam. so that OLE may consult exam. result of OEE 2 nd Generation Worksharing

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ProgramsParticipants Duplication Reduction OLE duplicative work is reduced by use of OEEs work output KR-RAPID OLEs total pendency is reduced by reduction of duplicative work JP-FIRST Consistency of examination results of OEE and OLE is improved by use of OEEs work output Benefits of 1 st and 2 nd generation worksharing programs Weak points of 1 st and 2 nd generation worksharing programs ProgramsParticipants Biased Benefit Only OLE enjoys benefits of worksharing Quality & Consistency OEE does not have access to additional information Limited effect on examination quality and consistency Timely and mutual exchange of information between OEE and OLE is required Evaluation of 1 st and 2 nd Generation Worksharing

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PCT Collaborative Search and Examination An initiative for improving ISR and WO-ISA quality Examiners of participating offices jointly establish PCT ISR and WO-ISA Main examiner establishes final ISA and WO-ISA based on the supplemental info. and comments from peer examiners Office Supplemental Prior Art from Peer Office Comments on Patentability from Peer Office Additional Prior Art Cited in Final ISR KIPO 77%67% 71% EPO87% 3 rd Generation Worksharing

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Modified Timeliness Strategy (EPO) Mutual sharing of prior art information between OEE and OLE Optimized for the preparation of European Search Report OEE OLE Prior Art List 1 month before OA of OEE or 3 months from reception of OEE trigger OPD Prior Art List within 15 months from priority date or 3 months from OSF trigger OPD 3 rd Generation Worksharing

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Collaboration Before Office Action (KIPO) Exchange of prior art list before the first office action of OEE OEE may expedite the examination for consultation of OLEs Aimed at enhancing consistency and examination quality Should be operated upon the applicants request Timely and mutual information sharing between OEE & OLE for examination quality and consistency OEE OLE Prior Art List [Before FA of OEE] OPD Expedited Exam. Expedited Exam. Prior Art List [When Ready] OPD Deferred Exam. (Optional) Deferred Exam. (Optional) 3 rd Generation Worksharing

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Extension and improvement of 1 st and 2 nd generation worksharing Increased use of implemented programs (PCT, PPH, PCT-PPH, OPD etc.) Launch of new programs (PCT NO & ISA collaboration etc.) Developing and activating 3 rd generation worksharing Pilot programs between IP offices (PCT CS&E, CoBOA, Timeliness Strategy etc.) Systematic analysis study for identifying factors affecting quality and consistency User Participation Worksharing based on the applicants request Flexibility for users (selection of participating offices etc.) Future Perspective

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KIPO as an PCT ISA

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DateHistory May 1984Joined the PCT (36 th member nation) August 1984Acted as a RO and a DO December 1999Acted as an ISA and an IPEA April 2007KRs patent documents were added to the PCT minimum documentation January 2009Korean language became language of publication under the PCT system 1. PCT at KIPO History of Koreas PCT System

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KIPOs share of distributing ISRs was 14.1% Ranked third, following EP and JP 12 Share(%) - EPO 38.5% - JPO 21.5% - KIPO 14.1% - SIPO 10.7% - USPTO 8.6% (WIPO Statistics, April 2013) 1. PCT at KIPO No. of ISR established by ISA

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Competent ISA for US Applicants USPTO, EPO, KIPO, AU, RU As of FY 12, KIPO accounted for about 30% with about 16,000 (USPTO Statistics, 2013) 2. KIPO as an ISA for US PCT Applicants KIPO as an ISA for USPTO Filings

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(08~13 per year on average) 2. KIPO as an ISA for US PCT Applicants Customer of Request ISR More Than 100

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892 Examiners in KIPO (Dec. 2013) Ph.D. (40%) and State exam passers (17%) 3. Competitiveness of KIPO * 5 outsourcing agencies (having appr. 600 searchers) support KIPOs prior art search KIPOs Examiners in 2013

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3. Competitiveness of KIPO KOMPASS (KIPOs Patent Searching System)

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US documents accounted for 52%, KRs 24%; JPs 16%, and WOs 5% as of 2011 Various documents were cited as references 3. Competitiveness of KIPO Publications Authority of Citations

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Competent ISA for US applicants Searching Fee(USD) EPO$2,545 IP Australia$2,076 USPTO$2,080 KIPO$1,212 ROSPATENT$209 [As of Feb 2014] 3. Competitiveness of KIPO International Search Fee

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Advantages of KIPO come from Top level examiners Search from various foreign language Reasonable search cost Conclusion

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How to use the PPH at KIPO

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PPH Activities & Statistics at KIPO

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PPH Agreements with KIPO PPH (22 offices) : JAPAN (07.4), USA (08.1), DENMARK (09.3), UK (09.10), CANADA (09.10), RUSSIA (09.11), FINLAND (10.1), GERMANY (10.7), SPAIN (11.7), CHINA (12.3), MEXICO (12.7), SINGAPORE (13.1), HUNGARY (13.1), AUSTRIA (13.3), ISRAEL, PORTUGAL, SWEDEN, EPO, AUSTRALIA, NORWAY, ICELAND (14.1), PHILIPPINES (14.4) PCT-PPH (20 offices) : USA (11.7), CHINA (12.3), JAPAN (12.7), AUSTRIA (13.3), EPO, HUNGARY, ISRAEL, PORTUGAL, SPAIN, SWEDEN, AUSTRALIA, CANADA, DENMARK, FINLAND, NORWAY, RUSSIA, UK, ICELAND, NORDIC PATENT INSTITUTE (14.1), PHILIPPINES (14.4) JAPAN KIPO DENMARK CANADA FINLAND SPAIN USA UK RUSSIA GERMANY CHINA HUNGARY AUSTRIA ISRAEL SWEDEN MEXICO SINGAPORE EPO PORTUGAL NORDIC PHILIPPINES AUSTRALIA NORWAY ICELAND

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# of PPH & PCT-PPH Requests

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Office of First Filing Number of Requests JAPAN2,236 USA1,304 DENMARK18 CANADA18 UK55 RUSSIA2 FINLAND7 GERMANY28 CHINA9 ISA or IPEA Number of Requests JAPAN302 USPTO43 SIPO16 KIPO117 PPH PCT-PPH # of PPH & PCT-PPH Requests (2013)

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PPH Applications All Applications (PPH + Non PPH) Grant Rate (%) 89.9 67.5 First Action Allowance Rate (%) 41.0 10.5 Average Pendency from PPH Request to First Office Action (months) 2.4 13.2 Average Pendency from PPH Request to Final Decision (months) 5.0 19.1 Grant Rate & Pendency (2013)

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How to File a PPH Request at KIPO

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PPH OEE Application The same earliest date Claim correspondence OLE Application at KIPO Decision of Patentable/Allowable Request for PPH OEE: Office of Earlier Examination, OLE: Office of Later Examination Requirements : PPH Request for Examination

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Patentable claims Both the OEE application and the OLE application have the same earliest date which may be the priority date or the filing date Claims correspondence Request for examination Requirements : PPH

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Documents to be submitted : PPH Form of request for accelerated examination - with explanation of request for accelerated examination under the PPH Copies of claims and translations Copies of office actions (OAs) and translations Copies of references Claim correspondence table

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PCT-PPH DO 1 at KIPO DO International Phase National Phase ISA/IPEA Positive Results Accelerated Examination Request for PCT-PPH PCT Application The same earliest date Claim correspondence Request for Examination Requirements : PCT-PPH

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Patentable claims determined by the ISA/IPEA Both the PCT application and the OLE application have the same earliest date which may be the priority date or the filing date Claims correspondence Request for examination Requirements : PCT-PPH

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Documents to be submitted : PCT-PPH Form of request for accelerated examination - with explanation of request for accelerated examination under the PCT-PPH Copies of claims and translations Copies of latest international work product and translations Copies of references Claim correspondence table

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Additional information Participation Fee Notification of acceptance of PPH request Applicants provided with opportunity to meet requirements of request after initial failure

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Thank you! Gracias!