SDOs and Patent Offices :
Towards a better interface
Dr Michel Goudelis,
Director Telecommunications, EPO
GSC-14, July 2009
Geneva, Switserland
Introduction
• The issue of ICT Standards remains an important
priority area for EPO's external relations policy.
The reason is that in the field of ICT Standards,
which usually include a large number of patents, a
lot of public and political pressure exist and
strengths and weaknesses of the patent system
are magnified.
Tensions are appearing
• Rising tensions through competing business models but also
because of geopolitical reasons
• Increased scrutiny "from outside": competition authorities,
politics, courts
• Principal problem: IPR policies of most SDOs are confronted
with new challenges; rules not clear and/or not sufficiently
enforced
• These tensions could be seen as an expression of the
broader challenges in the governance of the global
knowledge economy.
Climate Change: new possible convergence
• Both the standardisation and the patent system are
poised to play a positive role towards development and
application of environmentally sound technologies (EST).
• COP15 (UNFCCC, Copenhagen, December 2009) is an
important milestone
• ITU's declaration in Johannesburg and presence in
Poznan of its Dep. Secretary General
• Joint project EPO-UNEP to assess role of patents,
including establishing a database for EST-related patents
and technologies (Art. 194 and 195 of AWG LCA
negotiating text)
Internal measures
• Increased awareness (reaching at highest level)
• Technology watch in this particular field (resource planning)
• Supply additional resources in the following areas
– Documentation (standards related documents:
acquisition and processing)
– Examination:
◦ additional training
◦ systematic links with technical committees of SDOs
◦ Special services for SDOs (landscaping, patent
searches)
Standards related documents
– Access to all non-confidential technical
documents (standards, temporary, drafts,
contributions, ...)
– Technical field (publishing working group) on
each document
– Effective publication date of submitted
contributions
– Clear dissemination policy
Non-confidential technical documents
• Contributions
First disclosure of new technical information shortly
before or during a working group meeting
• Temporary - not by all SDOs
Documents that are deleted after a certain period or
if a new version is published
• Drafts - not by all SDOs
Pre-versions of a standard, base for discussion and
voting
• Standards
Final document after discussions, agreement and
voting
Non-confidential technical documents
Why contributions?
Patent Appl. 1
Patent Appl. 2
(filing date) (non-public)
time
(submission/publication date)
Contr. 1
Contr. 2
Contr. 3
Standard (C2)
• Not every contribution (1, 3) becomes part of a standard
• Patent application is non-public up to 18 months after filing
• Contributions represent the
first publication of new technology
Working group information on all documents
300.000
documents
• Search Tool
1500 documents
Effective publication date on all documents
• Search Tool
• Legal
information
• public when
up-loaded to
documentation
server
Effective publication date versus Meeting date
Patent Appl.
7.2.2007
WG Meeting
20-21.2.2007
(filing date)
(publication date)
Contr. C1
20-21.2.2007
(1.1.07)
WG A
Contr. C2
20-21.2.2007
WG B
Standard (C1)
20.4.2007
WG ?
• available before meeting
• Publication date vs meeting date
 Risk of not considering contribution 1 as prior art
and granting patent
time
Clear dissemination policy
External measures 1/4
• Bridging the two worlds: Resolutions at GSC 12
and GSC 13, encouraging SDOs "to cooperate
with the relevant Patent and Trademark Offices to
provide access to technical information for use by
such Agencies that should help them improve the
quality of patents being granted" still remain
actual, need to be reaffirmed and further
substantiated.
External measures 2/4
• Interface amelioration : Suggestion from ITU TSB Director's Ad Hoc
Group on IPR to ITU to agree on a minimum standard for standards
documentation including publication date, working group and further
data to improve identification of prior art for patent examination. ETSI
recommendation to encourage the use of a document template to
facilitate the work of patent examiners and to improve prior art
identification. IEEE-SA documentation format definition and
dissemination policies aligned as much as possible to the patent
search needs.
• Bilateral Cooperation : in form of Memorandum of Understanding or
Partnership Agreement between SDOs and Patent Offices ( EPO with
ETSI, IEEE and ITU) in order to formalise and intensify cooperation.
External measures 3/4
• Contribute towards transparency:
both in technical (up-to-date, informative databases) and structural
(clear landscapes and boundaries) regard.
• Establish patent related services for SDO's such as: patent search
services and patent landscaping services.
• Cooperation among major Patent Offices (IP5, composed of USPTO,
JPO, KIPO, SIPO, EPO) for a common policy, including a common,
standards-related documentation database.
• In cooperation with WIPO, long term include such documentation as
PCT minimum requirement.
External measures 4/4
•
Standardisation organisation could link their IP declarations databases to
the public registers of the major Patent Offices, such that the included
information (validity of application, scope of granted patents, patent family,
etc.) is constantly updated and valid.
•
Patent rules of standardisation organisations, in particular dissemination
and confidentiality rules, should be more clear and more compatible with
patent law.
•
Proper functioning of both systems needs resolution of potential conflicts