ruud peters philips intellectual property & standards september 18, 2009 towards global...

Ruud PetersPhilips Intellectual Property & StandardsSeptember 18, 2009Towards Global Collaboration

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Philips Intellectual Property & Standards, September 18, 2009

Need for uniform, efficient and predictable patent systems around the world*What does industry need?More and more companies operating on global level

Companies need patents in increasingly more countries in support of their business

Open Innovation drives increased need for more global protection

Different patent systems hamper development business and cooperation


*What does industry need?Patent systems should provide:High quality patentsTimely deliveredFair cost

High quality patents is interest of both applicants and third partiesGuide R&D investmentsDetermine risks in product developmentCertainty in commercial transactions

PTOs and users have shared responsibility to accomplish goals


*Global Patent WarmingGlobalization: more international filings by existing users patent system

New participants patent system in developed countries New users in BRIC-countries: explosion of local filings With growing GDP of BRIC-countries: increasing international filings

Global patent filings will continue to increase

Chart1

199060754382036070425820171163

359555984359536159028133172115

342458896342436219731073183347

1961856974372035550036493184196

1906778499480034120145712202755

1869978499656636883178499228142

2274264035856237667490326211946

10155729041015540161892684220496

4739675233895440209575233236979

5004480642482640445780642265763

519061020108503419543102010295895

6345010461210592440248104612326471

8023210613611465421805106136334445

10624311865112613413093118651342441

14011512370117466423081140115356943

17332712871324505427078160921390733

21019013523128940408674166189425967

24516114143935218396291170711456154

28983814656120083910022008456321

CN

EU

IN

JP

KR

US

Sheet1

Column1CNEUINJPKRUS

199060754382036070425820171163

1991359555984359536159028133172115

1992342458896342436219731073183347

19931961856974372035550036493184196

19941906778499480034120145712202755

19951869978499656636883178499228142

19962274264035856237667490326211946

199710155729041015540161892684220496

19984739675233895440209575233236979

19995004480642482640445780642265763

2000519061020108503419543102010295895

20016345010461210592440248104612326471

20028023210613611465421805106136334445

200310624311865112613413093118651342441

200414011512370117466423081140115356943

200517332712871324505427078160921390733

200621019013523128940408674166189425967

200724516114143935218396291170711456154

2008289838146561391002456321

To resize chart data range, drag lower right corner of range.


*Global Patent QualityMajor patent offices have not been able to cope with steep increase in patent filings

Huge backlog of unexamined applications built up (EU > 500K; US > 850K)

Over time it has become easier to get a patent granted

Average amount of R&D investment per patent filing decreased in US

Source: USPTOs annual report combined with US R&D data Average patent quality has decreasedR&D Investment (M$) per patent filing

Chart1

1.191.151998

1.121.111999

1.131.092000

11.042001

0.9312002

0.9550.982003

0.890.942004

0.890.92005

0.90.882006

0.890.842007

Average

Trend

Sheet1

AverageTrendPhilips 2

19981.1901.150

19991.1201.110

20001.1301.0901.180

20011.0001.0401.100

20020.9301.0000.960

20030.9550.9800.850

20040.8900.9400.820

20050.8900.9000.830

20060.9000.8800.870

20070.8900.8400.980

Sheet2


*Reaction PTOsPercentage of patents granted by Patent Offices is decreasing This trend is aimed to:slow down growth in patent filingsreduce backlog patent officeslonger term: increase quality

With decreasing economic lifetime of patents (8-10 years) this creates financial problem for PTOs

More front loading instead of back loading patent cost

Chart1

70.41998

70.866

70.967

69.765

6662

66.261

62.559

58.753.3

53.656

50.951

44.249.5

422009

Patent Grant Rates

US

EPO

Sheet1

USEPO

199870.4

199970.866

200070.967

200169.765

20026662

200366.261

200462.559

200558.753.3

200653.656

200750.951

200844.249.5

200942

Sheet1

US

EPO


*What needs to be done?Raise the bar to increase quality patents

Examine patents when needed taking into account maintenance practices

Cost may fairly reflect strategic and commercial value patents

A high quality and efficient patent examination is needed

Co-operation among PTOs and users offers gains in quality, efficiency and cost


*What Patent Infrastructure should be developed?

The main infrastructure is already in place: PCT

PCT is well established, successful system

When more fully used PCT can help to: reduce patent pendencies reduce backlogs PTOsincrease patent qualityimprove PTO income structure

Both PTOs and users need to contribute to the solution


What could be done? Reducing pendencies / backlogs priority of major PTOs.

How can we achieve this objective?

Proposed is 3-step process:Incentivize applicants to use PCTHigh-quality PCT search/examinationRequire applicants to respond to PCT report before designated offices start national search / examination*


Why this 3-step process will help

PCT: A single international phase before one office leads to abandonment (double-digit percentages!) before national phase entry and thus less cases to process by all designated offices Significant lower abandonment with national applications. Therefore these give more work.

Increased quality as PCT report is taken into account before designated offices start working.

Improved income structure as because of increased quality PTOs will for higher %-age of all applications receive both procedural fees and maintenance fees.*


How does it work?Three step process:Incentivize applicants to use PCTHigh-quality PCT search/examinationRequire applicants to respond to PCT report before designated offices start national search / examination

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1. Incentivize applicants to use PCTFor e.g. US national applications entry fees (filing + search + examination) are much lower than similar PCT fees applicants will prefer national US route instead of PCT.

Make entry fees of national applications more expensive but compensate for instance by lowering the issue fee

Will increase front loading fees, which is needed anyhow

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How does it work?

Three step process:Incentivize applicants to use PCTHigh-quality PCT search/examination Require applicants to respond to address issues in PCT report before designated offices starts national search / examination

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2. High-quality PCT search/examination Quality and extent of PCT search / examination should be at least as good as for national applications.

PCT requires (Art.16(4)) :The ISA shall endeavor to discover as much of the relevant prior art as its facilities permit, and shall, in any case, consult the documentation specified in the Regulations.

The higher the quality and the larger the extent, the higher the dropping-rate and the lower the inflow into the national phase.*


2. High-quality PCT search/examination ISA will mostly also be designated office (or a national office in a parallel national application)

Efforts put in PCT search & examination are not wasted as ISA has to do work anyway in the national procedure

Make examination as to disclosure / claims mandatory instead of optional (art. 5/6 PCT)

The more work is done in international phase the better*


How does it work?

Three-step process:Incentivize applicants to use PCTHigh-quality PCT search/examinationRequire applicants to respond to PCT report before designated offices starts national search / examination

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Philips Intellectual Property & Standards, September 18, 2009*Require applicants to respond to PCT reportApplicant should demonstrate that application meets national requirements notwithstanding PCT objections and make any necessary amendments

Responsibility of designated office remains unaffected

Result:Applicants are forced to think before entering national phaseFewer national phase entriesHigher quality inputNo duplication of efforts by designated office


3. Require applicants to respond to PCT report Under New Rule 161(1) EPC applicants have to respond to written opinion before entering national phase

This is step into right direction, but not applicable to Euro-PCT applicants with non-EPO PCT report.

Rule 161(1) EPC should apply to all Euro-PCT applications*


Philips Intellectual Property & Standards, September 18, 2009*Three step process in summaryHelps to reduce workload, backlogs and pendencies

Increases quality input of national phase applications

Improves income structure of PTOs


Philips Intellectual Property & Standards, September 18, 2009*Patent Prosecution HighwayBasic PPH idea makes sense, but

PPH is not a fundamental solution to reduce workload / pendencies

PPH limited to low percentage of cases; does not work for large number of applications

PPH discourages using PCT: it can only be used if a positive national report is available and not with a positive PCT report.


Towards Global CollaborationTo fundamentally address global workload and pendencies:

PCT should be the preferential system, using the 3-step procedure involving high-quality PCT reports and mandatory applicant response upon national phase entry before national phase processing starts

With high-quality PCT reports, no reason anymore to discriminate against PCT reports in PPH framework

As long as PCT is not the preferential system, further PPH developments are putting the cart before the horse* PCT first, PPH second


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ruud peters philips intellectual property & standards september 18, 2009 towards global...

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patent grantedaverage

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patent filing chart11

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