jeju, 13 – 16 may 2013standards for shared ict patent offices and sdos cooperation development dr...

Jeju, 13 – 16 May 2013 Standards for Shared ICT

Patent Offices and SDOs cooperation development

Dr Michel Goudelis, Director Telecommunications,

EPO

Document No:

GSC17-IPR-06

Source: European Patent Office

Contact: Michel Goudelis, EPO ([email protected])

Ged Owens, EPO ([email protected])

GSC Session:

IPR WG

Agenda Item:

5.1

Ged Owens, Coordinator Public Policy, EPO

GSC17-IPR-06

Standards for Shared ICTGSC-17, Jeju / KoreaGSC-17, Jeju / Korea 2

OverviewOverview

• 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

GSC17-IPR-06


Importance of cooperation between patent Importance of cooperation between patent and standardisation systemsand 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

GSC17-IPR-06


Quality of EPO patent processQuality 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.

GSC17-IPR-06


Granting high quality patentsGranting 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 SDOsEPO 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

GSC17-IPR-06


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

GSC17-IPR-06


Strategic directions for the cooperation with SDOsStrategic 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.

GSC17-IPR-06


Challenges for the EPO 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

GSC17-IPR-06

Standards for Shared ICTGSC-17, Jeju / KoreaGSC-17, Jeju / Korea

• 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

Results of EPO cooperation with SDOs

GSC17-IPR-06


Following Actions/GoalsFollowing 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

GSC17-IPR-06


Supplementary SlidesSupplementary Slides

GSC17-IPR-06


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

GSC17-IPR-06


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

GSC17-IPR-06

Standards for Shared ICTGSC-17, Jeju / KoreaGSC-17, Jeju / Korea

Europeanpatentapplication

Filing andformalitiesexamination

Search report with preliminaryopinion onpatentability

Grant ofEuropeanpatent

Refusal or withdrawal of application

Substantiveexamination

The unitary patent as a European patent

UNITARY PATENT

for the territories of the 25 participating states

At the request

of the patent proprietor

Limitation/revocation/oppositionproceedings

Appealproceedings

Same grant procedure as for classic European patent

The unitary patent replaces the individual effects of the European patent

in the 25 participating states

15

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