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1 1 AIPLA Firm Logo American Intellectual Property Law Association “The Global Dossier Initiative” Anthony Venturino – Novak Druce Connolly Bove + Quigg LLP Washington, D.C. Joint CIPA AIPLA Meting Monday March 11, 2013

1 1 AIPLA Firm Logo American Intellectual Property Law Association “The Global Dossier Initiative” Anthony Venturino – Novak Druce Connolly Bove + Quigg

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11 AIPLA

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American Intellectual Property Law Association

“The Global Dossier Initiative”

Anthony Venturino – Novak Druce Connolly Bove + Quigg LLPWashington, D.C.

Joint CIPA AIPLA MetingMonday March 11, 2013

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WHAT IS IT?

The Global Dossier is a single, global portal for all stakeholders working on patent filings in multiple offices.

One Stop Viewing Cross-Filing

THE GLOBAL DOSSIER March 11, 2013

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WHAT IS IT?

The Global Dossier is a information technology system that may support the following functions

Cross Filing and Portfolio Management Work sharing between Offices Real-time collaboration of examiner-applicant, examiner-

examiner, and third-party Machine translation Exchange of non-patent literature citations Support for due diligence for acquisitions, licensing, appeals,

litigation

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POTENTIAL ADVANTAGES TO USERS

Help users better manage intellectual capital while saving costs Provide One Stop View so examiners and applicants can

simultaneously check multinational examination information. Facilitate preplanned cross-filings

Permit applicants to easily re-file an existing application with another patent office

Prevent inadvertent loss of right due to missing fee payments or filing deadlines

Provide one-portal to pay fees and manage cross-filed applications with secure access

Benefit from new technology, such as machine translations Technical harmonization will show areas for future procedural

and substantive harmonization Eliminate duplicate filings of priority documents

THE GLOBAL DOSSIER March 11, 2013

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POTENTIAL ADVANTAGES TO OFFICES

Higher Efficiency

Provides access to search and examination details of other offices Realigns and streamlines IT efforts such as IP5 One Portal

Dossier, WIPO CASE, ePCT

Global Compatibility Becomes more useful with increased harmonization and

understanding of differing practices

Higher Quality Enhances work sharing leverage through information

exchange and examiner collaboration to achieve higher quality

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KEY ORGANIZATIONS FOR THE GLOBAL DOSSIER

Trilateral Offices Initially proposed by the USPTO in 2011 and further developed with

the JPO

IP5 Offices In June 2012 the IP5 agreed to move forward on the Global Dossier In January 2013 the IP5 held a working group meeting for additonal

planning

WIPO The Vancouver Group has partnered with WIPO to the Centralised

Access to Search and Examination (CASE). It is a digital library of search and examination reports that will be accessible via existing WIPO’s technical infrastructure.

User Groups Provide feedback, suggestions and encouragement

Other Patent Offices

THE GLOBAL DOSSIER March 11, 2013

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CONCEPT DIAGRAM OF GLOBAL DOSSIER

OPD(EPO)

CASE(WIPO)

OPD(SIPO)

OPD(JPO)

OPD(KIPO

)

OPD(USPTO)

KOMPASS

KIPRIS

특허로

Sponsor Nat.Indonesia

Thailand

PatentScope

ePCT

ESPACENET

CCD

Other Offices

AUUK

Canada

THE GLOBAL DOSSIER March 11, 2013

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ONE POSSIBLE SCHEDULE

2013 2014 2015 2016OPD, CASE, PatentScope, CCD Analysis + Design for System Linkage

OPD, CASE, PatentScope, CCD Linkage Development

One Stop View Analysis + Design

Cross-Filing Policy, Tech Analysis & Design

One Stop View System Development

Cross-Filing System Development

2017

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NEXT STEPS

Technical and legal analyses are underway at the key

organizations

Connectivity testing among the IP5 Offices will begin in April -

First step towards the first building block of Global Dossier which

is access to the search and examination results of the IP5 offices

Key organizations (or the Task Force) are set to conduct

outreach to gather input from all interested parties –

in line with commitment by the Offices to an inclusive and

transparent process for defining requirements

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RECOMMENDATIONS

Encourage user participation in development of the Global

Dossier

Encourage offices to provide mechanisms for user feedback

Encourage offices to consider changing procedures and rules

which interfere with its implementation

A video describing the Global Dossier is available at the following

link: http://www.uspto.gov/patents/int_protect/gbldssr/index.jsp

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Thanks for your attention! Questions?

Anthony Venturino, PartnerNovak Druce Connolly Bove + Quigg LLP

1875 Eye Street NW, 11th FloorWashington, DC 20006

+1-202-659-0100

[email protected]

THE GLOBAL DOSSIER March 11, 2013