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Efficient Patent Search and Examination for Small and Medium-Sized IP Offices

Explore ways for small and medium-sized IP offices to search and examine patent applications efficiently. Learn about outsourcing options, the experience of other IP offices, and the Singapore model.

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Efficient Patent Search and Examination for Small and Medium-Sized IP Offices

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  1. How can small and medium sized IP offices search and examine patent applications efficiently and effectively?Would it be possible to exploit search and examination (S&E) work done by other IP offices and if so, how?What experience do some IP offices have in contracting work to other IP offices?

  2. The Singapore Experience • Vision • Considerations • Challenges • Possible solutions • Decision • Continued improvement • Going forward

  3. Vision To operate an effective and efficient Patent Office

  4. Introduction of Revised Patent System 1994 • Conduct S&E locally? • Are there alternatives?

  5. Considerations • Singapore is export-oriented • Small population; need to avoid contending with R&D institutes for highly qualified technical experts • Duplication of S&E activities • Anecdotally, it appears only a small number of patents reach full exploitation

  6. Challenges • Low level of patent filings from nationals • Increasing technical complexity of inventions • Expansion of patentable subject matter • Shortage of expertise • Under-resourced and over-stretched public officers • Explosion of patent and non-patent prior art • Difficulty in recruiting the full complement of examiners • Expected high attrition rate of competent examiners

  7. Possible Solutions • To outsource search and examination work to other IP offices? • To specialise in particular classes of technology and outsource the rest of S&E work to other IP offices? • To rely on S&E reports of certain countries? • To rely on international search and examination reports? • To work share?

  8. Decision • To outsource S&E work • To maximise the value of corresponding S&E reports from prescribed IP Offices • To maximise the value of corresponding international search reports and international preliminary examination reports Translates to more opportunities for applicants Applicant has a choice of several routes to obtain the grant of a patent

  9. Partners (Examiners) Long term relationship Win-win approach • Austrian Patent Office (1995) • IP Australia (1995) • Danish Patent & Trademark Office (2003) • Hungarian Patent Office (2009) Work is distributed according to quota Applicants don’t get to choose the examiners Fees are leveled out across the four patent offices

  10. Continued Improvement • Since 2005 – annual dialogue among examiners and users and IP associations in Singapore • Surveys conducted on service quality of examiners • Invitation for written comments from users – consolidated feedback given in advance of meeting

  11. Continued Improvement Started June 2010 – biannual newsletters: • To share generally patent filing statistics on S&E requests, case briefs of recent decisions and law changes • To share individually with examiners their quality service levels Win-win approach connecting IPOS with each Examiner

  12. MIXED ROUTE Reliance on corresponding Search Results + Request for Local Examination SG patent laws FOREIGN ROUTE Reliance on corresponding Search & Examination Results (Patent Offices = AU, CA*, JP, NZ, ROK, UK, US, EPO*) LOCAL ROUTE Local Search & Examination (Examiners = IP Australia, Austrian, Danish and Hungarian Patent Offices) NB. For PCT SG national phase entrants, they can rely on their ISR & IPRP (Chap 1 or 2) * Applications filed In English

  13. Going Forward Proposal: Could WIPO provide value added services of Aggregation and Coordination of patent S&E services (ACSES) for countries that are prepared to outsource their S&E work?

  14. How is ACSES different from WIPO’s International Cooperation for the Search and Examination of Inventions (ICSEI) programme?

  15. ACSES Open to all interested IP Offices – countries with no S&E expertise or lacking in expertise in certain fields, large offices with backlog problems Centralised quality control Monitoring of service standards and timeliness ICSEI For developing countries and ARIPO only

  16. ACSES Provides for further written opinions or correspondence upon receiving the opinion of the examiners Provides for amendments and further correspondence with examiners ICSEI No provision for further written opinions or correspondence

  17. ACSES S&E to be conducted according to the respective countries’ legislation Possibility of officers from participating IP Offices to be attached to the central monitoring authority for training Likely to be a paid service ICSEI Does not cater to requesting countries’ legislation Service rendered pro bono

  18. Issues • How much will the service fee be? • Will there be a fee differential between developed and developing countries? • If donor countries are paid, how can we ensure that they continue to contribute to ICSEI?

  19. Pilot We could start with a pilot to test the concept

  20. Thank You

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