WPIS W IPO's P atent I nformation S ervice for developing countries

1. WPISWIPO's Patent Information Service for developing countries • Current WPIS • Analysis of Clients • Future Options

2. WPIS provides free of charge upon request by national IPO: State of the art search reportsfor private sector and institutions in developing countries > request requires detailed description of technical problem > to be endorsed by national IPO

3. WPIS provides free of charge upon request by national IPO: • Search and examination reports for patent applications of IPOs in developing countries > similar to PCT, but for national patent applications ICSEI – International Cooperation on Search and Examination of Inventions

4. WPIS also (still) provides free of charge upon request by national IPO: • patent family searches • paper copies

5. WPIS was established in the mid 80's • WIPO acts mainly as "agent": Requestor <> WIPO <> Donor • Search reports done by "donor offices" with expertise in search and examination, based on bilateral agreements with WIPO • Some donors contribute only state of the art search reports, others also "written opinions

6. Current donor offices: AR, AT, AU, BR, BG, CA, CH, CU, DE, FI, FR, GB, JP, KR, MX, NO, PT, RU, SE, VE • Some statistics state of the art ICSEI 2009 490 240 2008 1039266 2007 1077225

7. ► WIPO wishes to revise WPIS • Delivery of previous service continues as before • Section in charge of WPIS was renamed "Patent Information Service Support Section" and transferred to "Global IP Information Service" • Lutz Mailander has taken over from Jose-Luis Herce-Vigil in July 2009 • Currently investigating needs of our clients

8. Goals of WPIS revision: ► Focus on capacity buildingin countries developing their IP infrastructure, e.g. national IPOs should be able to deliver IP information services, e.g. state of the art searches, to their private sector ► Efficiency of WPIS, avoid duplication of work, aligning with PCT procedures

9. Clients of WPIS Rather than developing countries: ►IPOs of countries developing their IP infrastructure, in particular patent prosecution • Consequence of TRIPS agreement, becoming a member of WTO; of Free Trade Agreements (FTA) • Obligations as a PCT member ► IPOs treating PCT national phase entries and national patent applications

10. ► PCT national phase entries ISR: 1st set of search and examination report IPO: verify amended claims, top-up searches, communication with applicant ► national patent applications IPO: has to do all > final responsability for granting and quality

11. Different categories of IPOs as WPIS clients: • IPOs just embarking on patent prosecution (e.g. Bahrain, Oman, Bhutan) • IPOs having established patent prosecution ("emerging Offices"; e.g. Jordan, Malaysia, Viet Nam)

12. Patent prosecution – different options: • Doing full substantive examination (search, examination, granting) • Rely on results of other IPOs (for PCT, other priorities): requires identical claims ! • Outsourcing full patent prosecution (e.g. Singapore) ► WPIS is providing support after decision where to go !

13. Patent prosecution – different needs: • Developing expertise in substantive examination, patent prosecution in general • Support in selected complex technical fields where no (or not yet) experienced examiners are available • Access to specialised databases not free of charge for efficient, comprehensive searches • .....

14. Ideas/options for future WPIS ► Covering the whole patent prosecution (and opposition, invalidation ?), beyond just one set of search and examination report, including as well PCT in the national phase: • top-up searches of amended claims • direct exchange, i.e. tutorship between - an examiner developing expertise and - an examiner having expertise

15. Ideas/options for future WPIS ► Advantages / benefits of mentorship - clarification of requests - asking questions, discussing: efficient search strategy; assessing inventive step; assessing applicant's reply, amended claims (e.g. PCT); formality issues > Learning by doing, complementing training - Bulding trust, confidence, mutual understanding

16. Ideas/options for future WPIS ► For IPOs having experience in substantive examination: Support in selected complex technical fields ► Indirect, mediated access to specialised databases in order to complement searches in free databases ► Inclusion of legal status searches for patent families

17. Ideas/options for future WPIS ► Support for cooperation; take into account other cooperation initiatives: Vancouver Group, 9 SA IPOs, ASPEC, AIPN • avoid duplication of work, e.g. by sharing application information, priority claims • mutual use/sharing of search and examination results • using WIPO's platform DAS (Digital Access Service)

18. Ideas/options for future WPIS ► Training, tutorials for patent prosecution - cooperation with other programs/offices - using material developed by other offices - developing new material ► Establishing a platform for exchange on best practices

19. Mobilizing /saving resources: ► Investigating needs of countries developing IP infrastructure, options of cooperation > Ideally user driven ► Investigating options to broaden participation of "donors" • more ICSEI (i.e. written opinions) • mentoring • inclusion of other donors, e.g. all ISAs

20. Mobilizing /saving resources: ► Investigating funding options • Discriminate between requesting countries, e.g. LDCs • Free of charge for whom ? • Donors: mix of contributions being free of charge and such with financial compensation • Establishing fund for financing such compensation

21. http://www.wipo.int/patentscope/en/programs/developing_countries.htmlhttp://www.wipo.int/patentscope/en/programs/developing_countries.html Thank you! lutz.mailander@wipo.int

22. National patent application Applications with foreign priority / PCT Examiner with technical expertise Examiner without technical expertise Use foreign results Do own search / complementary ICSEI ICSEI Interaction with applicant / Decision on what to grant Granted / refused patent