Intellectual Property in the Digital World-Standards and Patents in Europe

Frank Rüschmann, Michel Goudelis

European Patent Office

May 2016

European Patent Organisation

- Quality patents for Europe — and beyond

38 member states Extension agreements for 2 states Validation agreements for 2 states

4000 patent examiners

40 years of EPO - originally only 7 member states

EPO - largest PCT search authority (40%) for up to 146 contracting states in PCT system

Quality patents - only granting temporary exclusive rights via patents for genuine technical inventions

Approx. half of all patent applications at EPO are refused or withdrawn

The scope of protection usually reduced during examination process

Patents – A Contract

• Interest of inventor: Inventions are necessary to drive business

• Consequence: Inventions are kept as a secret

• Interest of society: Publication of inventions is required to avoid

‘re-invention of the wheel’

• Solution: A contract:

Publication for time-limited Monopoly

Publication of Invention Time-limited Monopoly

• The Application is non-public for up to 18 months after filing

• Period of 9 months to file an opposition

Patent Procedure at the EPO (in a nutshell)

Search

time

(public)

(non-public)

9 Months

Filing of

Patent ApplicationSearch

Publication

Request of

Examination

Grant/

RefusalNotice of

Opposition

Decision

Notice of

Appeal

Action by

Applicant

EPO

3rd party

6 Months

18 Months

Decision

Examination Opposition Appeal

ICT at the EPO

• Cluster ICT one of the 7 technical areas in the EPO

• 700 examiners specialised in all areas of Information and

Communication Technology

• ICT Patent activities in 2015:

18786 Searches

9137 Examinations

74 Oppositions

6532 European Patent Grants

Innovation in Telecommunications

• Telecommunications traffic requirements increase with 50-100%

annual growth rate

• Enhancement of legacy systems cannot accommodate such change

• Innovation efforts are particularly intense in wireless systems

• World patent applications in the field of Telecommunications and

particularly in fields related to 5G technologies are increasing

• Patent application filings reflect the activity in emerging and

developing standards, such as 4G and 5G

Standardisation in ICT

Information, Communication and Audio-Video-Media Technologies

are based on large distributed computer systems

History

• Competition on system technology

– high risk and limited development efficiency

Therefore

• Competition on implementation of agreed technology

– low risk for customers and fast development

Set-up of Standard Defining Organisations for

• Agreements on functionality of the system technology by all interested

parties in standardisation process

• Development of products implementing the defined system with

agreed functionality

A Working Approach to Open Standards

• Patents protect against theft of ideas.

• Patents on standardised technology provides a very strong

monopoly.

• Licensing of patents should be a mechanism to reward investment in R&D

and as such stimulate leading edge R&D that drives technology forward.

• Licensing of patent gives some increased confidence for new products.

• Where standards include patented technology a balance must be found

between:

Allowing access to the technology – to all companies wishing to use the standard

Rewarding those that have contributed their technology to the standards activity

Standard Development Process – Relevant Prior Art

• Companies include their developed technologies in public

telecommunications standards (patented or non-patented).

• Companies contribute drafts as proposal for a new standard to a meeting

the drafts containing new, unpublished technology.

• The contributions to working groups and drafts are often published or

publicly available (e.g. IETF for 6 months).

• Thus standards, contributions to working groups and drafts are

relevant prior art!

0

0,5

1

1,5

2

2,5

3

3,5

20072008 2009 2010 2011 2012 2013 2014 2015

Mil

lio

ns

10

Standards Documents in

EPO’s in-house Databases

Standards in Patenting Process at the EPO

Citation of standards documents

0

2500

5000

7500

10000

12500

15000

17500

20000

2007200820092010 2011 2012 2013 2014 2015

Nu

mb

er

of

cit

ati

on

s

EPO’s Standards Databases and Cooperation

Memoranda of Understanding and agreements between EPO and SDOs

• Confirm standards documentation as prior art

• Allow EPO access to the standards documentation

• Documentation becomes part of EPO’s prior art search

Agreements in place with and Standards and Contributions available of:

• ETSI, ITU, IEEE-SA, IEC, WorldDMB, BSI...

Standards and contributions further available of:

• 3GPP, IETF, MPEG, JPEG, OMA, DVB....

• Area of interest: Telecoms, Audio/Video/Media, Computer

• Access to all the technical contributions (temporary, drafts,...)

• Technical field (publishing working group) on each document

• Effective publication date of submitted contributions

• Clear dissemination policy

• Provision of standard related patent information by SDOs

– e.g. ETSI IPR ONLINE DATABASE using patent related data from

EPO patent databases

Cooperation with Standard Developing

Organisations

• EPO is fully aware of the challenges on the path to 5G and has

taken the necessary measures

• EPO is expanding cooperation with standards organisations, to

assure quality in new technical areas

• EPO has established clarity on the interaction of patents with

standards involving the major SDOs

• Increased transparency on intellectual properties (standards

and patents) by EPO and SDO information services

Conclusion