AIPLA 2012 Annual Meeting

Washington 25 October 2012

Worksharing, utilisation and the CPC

Niclas MoreyDirector, International Organisations, Trilateral and IP5

The IP5 context

Global patent filings rising continuously, especially Chinese applications

2

Patent filings at IP5 Offices

0

250 000

500 000

750 000

1 000 000

1 250 000

1 500 000

1 750 000

2 000 000

2 250 000

2 500 000

2000 2001 2002 2003 2004 2005 2006 2007 2008 2009 2010 2011

EPO

USPTO

JPO

KIPO

SIPO

2011: Provisional estimates by EPODirect applications and internaitonal PCT applications designating the country

I. Work-Sharing - Principles

– Prerequisites for utilisation– Timeliness– High quality work– Appropriate basic infrastructure → UIP/IP5 Projects

– Essential features of a comprehensive utilisation scheme– Convergence/alignment of the different concepts– Simplicity, transparency, efficiency, sustainability– Common quality standards– Integration into existing procedures/work-flow– Discretionary approach as to the extent of reliance

Optimising the benefits of utilisation/work-sharing

A utilisation scheme on a permanent basis

• Amended Rule 141 EPC and new Rule 70b EPC

– entered into force on 1 January 2011

– apply to European patent applications and international applications filed on or after that date

• Applicant claiming priority has to file a copy of the results of any novelty search carried out by the office of first filing

– together with the European patent application or

– if Euro-PCT application, on entry into the European phase

• If search results not yet available:

– have to be filed by applicant without delay after they have been made available to applicant

The EPO's permanent utilisation scheme

• Exemptions under Rule 141(2) EPC have been granted for first filings made in AT, JP, UK, USA

• Applicants are also exempted if they claim the priority of an application for which the EPO drew up a certain type of search report– European, international or international-type search report– search report on behalf of a national office on a national

application (BE, CY, FR, GR, IT, LU, MT, NL, TR)

• Negotiations ongoing with other offices - key conditions for an exemption:– Electronic inter-office-exchange infrastructure– Exchange must cover OFF search results related to both

published and unpublished first filings – Complete and timely data flow (citations)

The EPO's permanent utilisation scheme

• Exemption maintenance dependent on delivery of search results by the USPTO to the EPO as soon as available, including when search results are available prior to publication of the U.S. application

• USPTO: 35 U.S.C. 122 prohibits USPTO to forward pre-publication data to the EPO without applicant's consent (form PTO/SB/69)

• USPTO Notice of 30 July 2012: – applicants strongly urged to timely file the Certification/Authorization form

PTO/SB/69 in each application that is intended to form the basis for a claim of priority to a corresponding application filed with the EPO.

– applicants should file the form prior to filing a European application that claims priority to the U.S. application in order for search results to be delivered to the EPO without delay should they become available prior to publication of the U.S. application

• Blog of Mr Kappos of 3 October 2012 titled "Claim your Exemption!" urging

applicants to file PTO/SB/69

The EPO's permanent utilisation scheme

• Leading up to August 2012, around 60 waivers were filed per month. In August 1 000 waivers were filed. Encouraging progress!

Question: Should the US statutory requirements be interpreted more liberally (see 35 U.SC. 122 "special circumstances as may be determined by the Director"), ie should the USPTO send the relevant information to the EPO automatically?

We are talking about pure citations which are not "sensitive information" and have already been published.

The EPO's permanent utilisation scheme

PPH pilot Launch date(all EPO PPH pilots operational until 28 January 2014)

Number of requestsas of 30 September 2012,

total eligible 1,380

(cumulative total 1542)

EPO/JPO 29 January 2010 670

EPO/USPTO 29 September 2008 371

Trilateral PCT - PPH 29 January 2010 339, of these

- with ISA JPO: 310

- with ISA USPTO: 29

Status of EPO PPH programmes

Participation volumes in Europe relatively moderate

• PLPPH working level meeting: October 2012

• Trend: harmonisation/simplification of participation/eligibility requirements – user-friendliness– efficiency – further standardisation of practice – development of a uniform, comprehensive PPH scheme

• Shift from the multitude of coexisting bilateral PPH agreements → PLPPH concept providing for an all-inclusive PPH scheme

• EPO mandated to lead work in this regard • to be further discussed at PLPPH working level meeting 29/30

October 2012

PPH: future trends

• Common Citation Document will move from Trilateral to IP5

– users will be redirected from www.trilateral.net/ccd to www.fiveipoffices.org/ccd

– new IP5 look prepared

• New US citation data flow in place:

– more than 2000 US-A1 publications per day, i.e. >10 000 citations per day

– source: List of references cited by examiner" (USPTO form 892)

– data is received for actions which have been created after 28 October 2011

• Work will continue and focus on improving the timely exchange of citation data with KIPO and SIPO

CCD: latest developments

Cooperative Patent Classification (CPC)Getting ready for the launch ...

• Developments in the Cooperative Patent Classification (CPC)

– Bilateral EPO-USPTO project initiated on 25 October 2010

– Joint refined scheme of the EPO and USPTO initially based on ECLA, comprising 250 000 subdivisions

– Was made public on 1 October 2012 via www.cpcinfo.org

– Will be in production on Espacenet in December 2012

– Will be in force at the EPO and at the USPTO on 1 January 2013

– Major milestone towards harmonisation of classification systems

CPC: latest developments

www.epo.org

Thank you for your attention.

Questions?

nmorey@epo.org