SpicyIP Tidbit: Global Patent Co-operation by 5 IP Offices

(Image Location: http://www.fiveipoffices.org/images/logo.jpg)

Recent times have seen a website being launched (here) representing a forum consisting of five of the largest intellectual property offices in the world, viz. the European Patent Office (EPO), the Japan Patent Office (JPO), the Korean Intellectual Property Office (KIPO), the State Intellectual Property Office of the People’s Republic of China (SIPO) and the United States Patent and Trademark Office (USPTO). The said forum, named the Five IP Offices (IP5), has been established with the aim of enhancing the effectiveness of the procedure for patent examination throughout the world.

As per information available from the forum itself, together the members of IP5 account for about 90% of the total patent applications filed all over the world and also perform almost 93% of the entire work that takes place following the provisions of the Patent Cooperation Treaty (PCT). Through this joint venture, the members seek to achieve a whole new level of co-operation and co-ordination on a global scale, by way of pruning needless duplication of work among the individual jurisdictions of the respective members, which will eventually lead to increased efficiency of the patent examination procedure and enhanced quality and guarantee of the stability of the patent rights conferred.

It is no secret that the offices of the IP5 members have been swamped with a backlog of work that is increasing exponentially everyday. With the process of globalization blurring regional and international economic divides, the inventors naturally seek concurrent protection of their works in all the markets possible and hence are prompted to file applications for the same technology at more than one patent office. IP5 intends to address this problem of backlog through the joint endeavour of its members.

The idea of the forum had been conceived in a meeting between the respective Heads of the 5 patent offices held in Jeju, Korea, on October 27 & 28, 2008. It was in that meeting that the work-sharing vision had come into existence, after it had been realized that in case of almost 250,000 applications per year, the work from one office could be reutilised by another and therefore, an enhanced work-sharing among the five offices was likely to make a substantial contribution to the capacity-increase in the patent examination carried out by each of the members.

It was mutually agreed between the members that for the realization of the work-sharing vision, two fundamental pre-requisites (based on the PCT foundation) are of necessity, viz. that (1) the results on patentability from the national procedure must be available on time and that (2) the work done needs to conform to a common approach to quality in the patent granting process. Moreover, a common methodology relating to disclosure of search and examination results was arrived at between the members based on mutual agreement.

Following 10 projects have been selected on which the vision is to be applied, launched from a PCT-based platform:

• Common Hybrid Classification (lead: EPO)

• Common Documentation (lead: EPO)

• Common Application Format (lead: JPO)

• Common Access to Search and Examination Results (lead: JPO)

• Common Training Policy (lead: KIPO)

• Mutual Machine Translation (lead: KIPO)

• Common Examination Practice Rules and Quality Management (lead: SIPO)

• Common Statistical Parameter System for Examination (lead: SIPO)

• Common Search and Examination Support Tools (lead: USPTO)

• Common Approach to Sharing and Documenting Search Strategies (lead: USPTO)

Details regarding each of these projects are available in the website here.

Emphasis has been laid on the significance of having an open communication channel (and also exchange of ideas) with other users of the system, including other patent offices, by the heads of the each of the IP5 offices. The importance of WIPO involvement in the implementation of the aforesaid projects has also been acknowledged. It has also been stressed upon that the examiners of the IP5 offices need to exhibit exemplary levels of involvement and commitment, especially in the matter of implementing the said projects and common action plans have also been suggested to achieve the desired degree of commitment, including holding an examiners’ workshops facilitating the implementation of the relevant Foundation Projects such as Common Documentation Database, Common Search and Examination Support Tools, and Common Training Policy. By April, 2010, detailed proposals (including costs, benefits, resources and time line) for each Foundation Project and further knowledge pertaining to implementation thereof have been agreed to be exchanged between the members.

At present, an inventor can seek protection for his invention simultaneously in all the countries abiding by the PCT (the number was 138 as on March, 2008), by filing a single international patent application under the PCT. Three of the IP5 members, viz. the EPO, JPO and USPTO have also been instrumental in introducing several laudatory reforms in the PCT by way of the Trilateral co-operation. The Trilateral Offices have been active in promoting efficiency-enhancing measures for the PCT, with the Common Application Format (CAF) and the Common Hybrid Classification being two foremost examples where PCT-related developments initiated by the Trilateral co-operation have at present been brought under the purview of the Foundation Projects. The Indian Patent Office, however, is conspicuous in its absence from the IP5 member group, although China, Japan and Korea have been included therein.