SDOs and Patent Offices :
Interface improvement
Dr Michel Goudelis,
Director Telecommunications, EPO
GSC-13, July 2008
Boston, USA
Introduction
• The issue of ICT Standards is becoming a priority
area for EPO's external relations policy. In
September 2006 we initiated a new phase of our
encounter with the ICT-standards world.
• The reason is that in the field of ICT Standards
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, now also IP institutions (see new debate at Standing
Committee on Patents of WIPO)
• Principal problem: IPR policies of most SDOs are confronted with
new challenges
• Tensions are a particular expression of the broader challenges in
the governance of the global knowledge economy
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
• Bridging the two worlds: Resolution at GSC 12, 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".
• Interface amelioration :Suggestion from ITU TSB Director's Ad Hoc
Group on IPR to ITU and by ETSI's IPR SC 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