Jordanian Patent Office Experience in Cooperating with WIPO in the

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Jordanian Patent Office Experience in
Cooperating with WIPO
in the field of
Search & Examination
Prepared by
Presented by
Dr. Lina Haddad
Head of Jordanian Patent Office
Organizations & Agreements Unit
Zain AL Awamleh
Head of International
Industrial Property Protection Directorate
Ministry of Industry and Trade
Contents





Facts
History of cooperation between Jordanian
Patent Office & WIPO in the Field of Search and
Examination
How the cooperation between Jordanian Patent
Office & WIPO in the Field of Search and
Examination looks like nowadays
How the Office see the future of cooperation
Statistics
Facts
Fact # 1:
 Jordan
uses the examination system not
the filing system, i.e. any patent
application filed in the patent office should
be examined in order to grant a patent or
not.
Quick note: all the filings in the office should be in Arabic and English language.
Fact # 2
 The
-
application in the Jordanian Patent
office has one of two tracks:
Track one: First filing application (called local
application)
-
Track two: Second filing application (called
foreign application)
Fact # 3

Article (21) of the Jordanian patent regulations
stipulates that “The Registrar may, for the
purpose of examination, get assistance from the
technical expertise available at any authority if
he deems that necessary”. Therefore, the
registrar can send the technical document to any
academic local entity or to the World Intellectual
Property Organization to help him in assessing
the patentability. (novelty, inventive step,
industrial applicability, in addition to unity).
Fact # 4

Jordanian Patent Office needs the help of WIPO in
search and examination field for the following reasons:
1)
Low number of patent examiners (4 examiners)
The examiners’ technical backgrounds don’t cover all
the technical fields of filed patent applications
Shortage of financial resources
The only used databases for the purpose of search
and examination are free databases
2)
3)
4)
Fact # 5
 For
the track two (Second filing
applications), Jordanian Patent Office
make use of the search & examination
reports of some patent office like; EPO
and USPTO.
History
of cooperation between
Jordanian Patent Office
&
WIPO
in the Field of
Search and Examination
History

The history of cooperation goes back to year 2001 when
WIPO offered the search and examination free service to
the Jordanian Patent Office. We started afterwards
sending the local filed applications to WIPO.

WIPO in it’s turn conduct searching for the prior art and
examining the application substantively. After that, WIPO
sends us back the results of search and examination.
History (Cont.)

In some cases, WIPO couldn’t examine the
applications and they satisfy with sending us the
prior art only. That’s because such applications
are not well drafted (for example, the inventor
was not able to convey the idea of his invention,
or the claims are not written in the proper legal
way, etc.)

In some other few cases, WIPO was not able to
conduct the search even. That’s because the
idea behind the application is vague and not
clear enough.
How the cooperation between
Jordanian Patent Office & WIPO
in the Field of Search and
Examination
looks like nowadays

What the Office did to increase the
benefit of WIPO offered service

The Office discovered that we need to improve
the level of the applications sent to WIPO.
Therefore;
1)
The patent examiners qualifications in the field
of searching and examination were improved.
Accordingly, the examiners were able to
educate the inventors about drafting their
application in the proper way.
2)
What the Office did to increase the
benefit of WIPO offered service (cont.)
3) The office increased the kinds of applications
sent to WIPO; so they include nowadays; 1)
forign applications without priority, and 2)
applications with un-useful piriority to follow, 3)
and the local applications
4) The office has created a new procedure that
precedes the search and examination step.
This procedure is called the preliminary
substantive examination.
What is the Preliminary Substantive
Examination

Through the preliminary substantive examination, the patent
examiner validate the following points:
1.
The application satisfies the condition of unity.
No mistakes has been made in the technical documents
regarding language, numbering or other formalities related to
the script of the technical documents.
The “claims” have been drafted in a proper way that defines
the exact scope of protection.
The disclosure of the invention doesn’t contradict with any
verified scientific rules.
The examiner will also conduct a preliminary search in the
prior art databases in order to preliminary asses the novelty
of the invention.
2.
3.
4.
5.
What is the Preliminary
Substantive Examination /Cont.

The preliminary substantive examination might yield in one of
two results:
1.
either the application is complete regarding the defects
tested in the preliminary substantive examination and in this
case it will be diverted to the substantive examination
or the application is not complete regarding the defects
tested in the preliminary substantive examination. In this
case, the examiner will call the inventor/applicant to ask him
to attend an official hearing to explain the examination details
to him and how he shall amend his application based on
those details.
2.

If the inventor/applicant amends the application in the proper
way, then the application is diverted to the substantive
examination step.
Substantive Examination

Either the application is examined in the office by the patent
examiners or sent to WIPO for ICSEI.

If the application was sent to WIPO, then the office wait the
result from WIPO. However, this doesn’t mean that the result is
binding . The Jordanian Patent Office could take by the
result of the report or not. This depends on the patentability
criteria according to the Jordanian patent law.

The ICSEI report is studied thoroughly by the Jordanian patent
examiner. Therefore, the decision of granting or not is up to the
Jordanian Patent Office.

So we can say that the role of WIPO in the examination
procedure is counseling but not a decision maker.
What was the result of
improvement?

The number of applications, that WIPO can
send ICSEI report for, increased.
 This in turn accelerated the procedure of
examination.
 WIPO is able to communicate easily with us
about the sent applications. So WIPO can ask
for certain and specified amendments for some
of the applications.
 The level of examination of the Jordanian
patent application increased tremendously.
How the Office see the future of
cooperation

More training for the patent examiners in the
field of search and examination. This could be
done through many ways like; training courses,
mentorship with the examiners in the examining
offices, etc.
 Excellent quality of drafting for the patent
applications sent to WIPO for examining.
 More cooperation with WIPO in the field of data
exchange. e.g. exachnage of legal status data
Statistics
Year
August 2010
2009
2008
2007
2006
2005
Applications by
Nationals
Applications by
Internationals
Granted patents
(Nationals)
Granted
Patents
International
25
60
50
59
75
49
280
446
535
507
428
169
16
11
10
23
10
9
46
40
11
40
50
46
Thank you
Website
E-mail
:
:
:
Office Tel. :
:
www.mit.gov.jo
Lina.h@mit.gov.jo
Zain.a@mit.gov.jo
00 962 5629060 – 326
00 962 5629030 - 321
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