SDOs and Patent Offices : Towards a better interface

Dr Michel Goudelis, Director Telecommunications, EPO

GSC-14, July 2009 Geneva, Switserland

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.

• 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.

Tensions are appearing

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)

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)

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

Non-confidential technical documents

• ContributionsFirst disclosure of new technical information shortly before or during a working group meeting

• Temporary - not by all SDOs

Documents that are deleted after a certain period or if a new version is published

• Drafts - not by all SDOs

Pre-versions of a standard, base for discussion and voting

• Standards Final document after discussions, agreement and voting

Non-confidential technical documents

time(submission/publication date)

(filing date) (non-public)

Contr. 1 Contr. 2 Standard (C2)

18 Months 18 Months

Patent Appl. 1 Patent Appl. 2

Contr. 3

• 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

Why contributions?

Working group information on all documents

1500 documents

300.000documents Working

WorkingGroup 1Group 1

• Search Tool

Effective publication date on all documents

8.8.8.8.20082008• public when

up-loaded to documentation server

• Search Tool

• Legal information

Effective publication date versus Meeting date

• available before meeting

• Publication date vs meeting date

Risk of not considering contribution 1 as prior art

and granting patent

(publication date)

WG Meeting20-21.2.2007

Standard (C1)20.4.2007WG ?

time

Contr. C220-21.2.2007WG B

Contr. C120-21.2.2007(1.1.07)WG A

(filing date)

Patent Appl.7.2.2007

Clear dissemination policy

WorkingWorking

Group 1Group 1

8.8.8.8.

20082008

• 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.

External measures 1/4

• 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.

External measures 2/4

• Contribute towards transparency:

both 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.

External measures 3/4

• 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

External measures 4/4