International Chamber of Commerce

1. International Chamber of Commerce Trilateral cooperation initiatives and international patent law harmonization Wim van der Eijk, EPO Paris, 15 May 2008

2. Introduction • Workload issues: a worldwide problem • Trilateral Offices: key figures for 2006* * Based on EPO estimates derived from the Trilateral Statistical Report 2006 • Broad geographic protection major factor • Cooperation and work-sharing essential

3. Trilateral Approaches (i) • Strategic objective: quality oriented, efficient, sustainable work-sharing between Trilateral Offices • Technical cooperation: incremental improvements to create appropriate environment through eg : • Infrastructure for digital data exchange • Linguistic tools (machine translations) • Harmonization of classification • Common search tools and documentation • Common application format • Harmonization of examination practices

4. Trilateral Approaches (ii) • Enhancing utilisation: pilot projects aimed at gaining experience as to logistics and usefulness of work-sharing • SHARE: Strategic Handling of Applications for Rapid Examination • Triway • PPH: Patent Prosecution Highway (Not confined to Trilateral Offices) • New Route (No involvement of EPO)

5. Make work available ASAP Make work available ASAP SHARE: Strategic Handling of Applications for Rapid Examination • Concept of prioritisation of 1st filings • Office-driven initiative • Applications filed via Paris Route • With at least 2 TOs (large number of eligible applications) OSF • OSF uses work of OFF if available in a timely manner • If not, OSF starts Search and Examination without waiting Prioritise 1st filings OFF OSF

6. SHARE - Current Status • Concept of prioritization of first filings (FFs) • Reflects actual practice at EPO • Difficult for NPOs with high levels of FFs • JPO: deferred examination additional hurdle • Preparation of pilot project: • Technical field: B60R vehicle technology: selection to be confirmed • Applicable to published files only • Information exchange re: how to prioritise 1st filings • Launch of pilot project expected: late 2008

7. Makes available FA within 6-12m from filing Makes available FA within 6-12m from filing TRIWAY: Promoting work-sharing during search phase • Applications filed via Paris Route • Corresponding subsequent filings in all three TOs • Project: provide early searches to international filers OSF Applicant files a corresponding application (≈ same claims) ASAP after filing with the OFF OSF drafts a complementary SR within 3m following notification of availability of SR from OFF Applicant files application Mega-search allows Applicant to decide whether to pursue or withdraw application OSF OFF

8. TRIWAY: Current Status • More of a quality-based than an efficiency-driven initiative • Pilot project for US applicants only: • First filing at USPTO, SR by EPO, then JPO • Participation at the applicant's request • Request for participation deemed to be waiver of confidentiality by applicant • Maximum of 100 files, limited to 10-15 per technical field • Work results of OFF forwarded to OSFs by applicant himself • To be launched in July 2008 • One year duration

9. Makes FA/SR available+ allowable/ patentable claims Makes available FA and allowable/ patentable claims PPH: Patent Prosecution Highway • Simplify requirements for entry into accelerated examination in OSFs • Accelerate OSF procedure through utilisation of search and examination results • Open to applications filed via Paris Route • With corresponding subsequent filing in OSF Applicant files a corresponding application (≈ same claims) OSF Applicant requests PPH, i.e. accelerated processing in the OSF based on the work results of the OFF (allowable/patentable claims). OSF proceeds with accelerated examination OFF OSF Applicant files application

10. PPH: Current status • Permanent programme USPTO - JPO (low levels of use) • Pilot projects underway between • USPTO and UK IPO, KIPO, CIPA and IP Australia • JPO and UK IPO, KIPO and DPMA • PPH-Comparable project USPTO - EPO • Based on the EESR • EPO will accept USPTO work results even after EESR drawn up as OSF, if examination at EPO not yet begun • OFF work forwarded to OSF by applicant • Request to participate will be deemed as waiver of confidentiality by applicant • Launch planned for mid-September 2008 • Duration: one year

11. Makes available SR and Exam. results Makes available SR and Exam. results New Route: 1 Application for all participating offices - 30 months moratorium • Applications filed via Paris Route • 1 Application for all participating offices • "Analogous New Route" borrowing from PCT procedures OSF Application filed at OFF deemed to be filed at OSF After 30m OSF starts SR and Exam using SR and Exam of OFF Applicant has 30m from filing/priority date to decide to continue or not with OSF OFF OSF Applicant files application

12. New Route: Current status • "Analogous New Route" Pilot project: • Applicable to PCT applications as well as Paris Route • PCT-like scheme for participating offices without IB involvement • Applicants responsible for forwarding OFF work results to OSFs • Launched between JPO and USPTO in January 2008 • Duration: 1 year, with a maximum of 50 files • EPO will not participate due inter alia to legal obstacles and complexity

13. FOCUS: Methodology to monitor benefits of Trilateral projects • Objective of work-sharing projects: development of a long-term, comprehensive utilisation scheme • Current Trilateral approach: piloting different formats • Problem: difficulties in assessing impact • EPO proposed solution: the FOCUS methodology • Select appropriate technical field(s) • Concentrate projects in chosen field (eg SHARE, Harmony, common search tools, common language tools...) • Assess and commit resources needed • Measure benefits, and • Build synergies between projects

14. Conclusion: Are we re-inventing the wheel? • EPO's view: any long-term utilisation scheme fulfilling strategic objective of effectively dealing with workload issues should be: • Simple, transparent, efficient, sustainable and deliver quality • Integrated into existing procedures to avoid operational challenges due to proliferation of procedures • Easy to link to cooperation schemes involving the EPO's NPOs (and possibly other offices world-wide) • Observation: PCT not being used to its full potential • Suggestion: most promising way forward might be to further develop PCT and maximise exploitation of PCT work results

15. SPLT - International Patent Law Harmonization (i) • Assumption: substantive patent law harmonization essential to maximise utilisation efficiency and build global patent system • Feb. 2005: Standstill in SCP, "Group B+ WG I" created • Discussions on "Reduced Package" (eg FF, Hilmer, grace period, third party rights, definitions of prior art + inventive step, 18-month publication...) to seek common basis for further discussions in WIPO • Tokyo, 2006: no agreement • Europe: no consensus (UK: mandatory declaration) + no international support for European delegations' position of April 2007 • Patent law reform in US: apparently stalling (but other issues involved than harmonization)

16. SPLT - International Patent Law Harmonization (ii) • Geneva, September 2007: Group B+ Plenary meeting: • Concern that SPLT negotiations will irretrievably lose momentum • Work should continue to create a balanced package • Position paper should be drawn up by Chair clearly setting out elements to be included in Package and policy intent behind them • Chair is conducting consultations with users world-wide • Next meeting of Group B+ Plenary: Geneva, September 2008 • Is the time ripe ?