Alternatives in Patent Search and Examination

Alternatives in Patent Patent in Alternatives Search and Examination and Search 2014

Policy Guide

Policy Guide on Alternatives in Patent Search and Examination

Policy Guide – Alternatives in Patent Search and Examination

One of the important tasks of a patent of- Fig. 1 Number of Patent Applications fice is to decide whether a patent shall be Filed and Number of Patent granted, or an application shall be refused, Examiners in Selected Patent Offices based on the procedures and patentability 700000 12000 50000 400 requirements under the applicable national 45000 600000 350 10000 40000 law. Making such decisions accurately, 300 500000 ofNb examiners 35000 ofNb examiners effectively and efficiently is a complex 8000 30000 250 mission, since many patent offices receive 400000 6000 25000 200 a constantly growing volume of patent 300000 20000 150 4000 Nb of applications applications of increasing complexity. Nb of applications 200000 15000 100 10000 100000 2000 The size of each patent office and the 5000 50 scale of its operation differ considerably 0 0 0 0 CN US JP KR EPO IN BR EG MY CO from one patent office to another. As an illustration700000 of the issue, one patent12000 office 50000 400 45000 received600000 more than 600,000 patent ap- 350 10000 40000 plications in 2012, while another patent 300 500000 ofNb examiners 35000 ofNb examiners 8000 office received six patent applications 250 400000 30000 in the same year. 1 The number of 6000patent 25000 200 300000 examiners employed per patent office 20000 150 4000 Nb of applications Nb of applications 200000 15000 varies widely: from only a handful of pat- 100 10000 ent examiners to, with respect to at2000 least 100000 50 one patent office, over 7,000 examiners. 5000 0 0 0 0 The internationalCN US legalJP framework,KR EPO such IN BR EG MY CO as the Paris Convention for the Protection of Industrial Property and the Agreement CN: China; US: United States of America; JP: Japan; KR; on Trade-related Aspects of Intellectu- Republic of Korea; EPO: European Patent Office; IN: India; BR: Brazil; EG: Egypt; MY: Malaysia; CO: Colombia al Property Rights (TRIPS Agreement), Sources: WIPO Statistics Database; IP5 Statistics; IP leaves Member States much room to India Annual Report 2011-2012; Brazil’s Patent Reform, maneuver in introducing any particular Center for Strategic Studies and Debates (2013); WIPO document PCT/A/40/4; WIPO Regional Seminar on Effective approach to prior art search and exam- Utilization of the Patent Cooperation Treaty (PCT) and International Work Sharing Initiatives (November, 2013); ination by their patent offices. and the website of the Superintendencia de Industria y Comercio (Colombia)

1 World Intellectual Property Indicators 2013, WIPO

1 Policy Guide on Alternatives in Patent Search and Examination

The purpose of this Policy Guide is to Policy Orientation illustrate various options available to countries for the search and examina- Hiring enough patent examiners with tion of patent applications. The choice of the requisite expertise, providing them a search and examination system in each with the latest prior art search tools and country should be based on its national constantly training them to upgrade their policy and strategy, in accordance with skills could increase the likelihood of the its specific circumstances. This Guide validity of patents, although it does en- therefore addresses non-exhaustive tech- tail a high administration cost. From the nical factors which may assist shaping broader policy perspective in designing a such national strategic consideration. patent system, however, hiring patent ex- As economic, social and geo-political aminers per se cannot be a goal in itself. environment of each country may develop over time, the Policy Guide is intended Designing patent granting procedures to support Member States in selecting in a patent office, such as patent search a best option suitable for each country. and examination, has to be considered in the context of the entire patent system, including the judiciary body, which has the ultimate competence to decide on the validity of patents, if they are challenged. Within limited national resources, patent offices conduct search and examination with the aim of ensuring that invalid patents are either not granted or else can be removed easily and effectively. In other words, patent search and examination within a patent office should support the broader policy goal of maximizing the social gains from the patent system against the social costs for maintaining the patent system. In that regard, a country’s allocation of costs among a patent applicant, third parties, a patent office and a judicial body has to be carefully evaluated, taking into consideration socio-economic development and the way the patent system is utilized in the country.

2 Policy Guide on Alternatives in Patent Search and Examination

In the past, alternatives in patent search and examination tended to be discussed BOX 1: Search and Examination Policy – from the perspective of a legal and insti- a Dynamic Concept tutional framework: (i) formality examination only; (ii) formality examination and The choice of a search and examination prior art search; and (iii) formality exam- system in a particular country may depend on ination, prior art search and substan- economic, social and geographical factors in tive examination. While they constitute and surrounding that country. Thus, with the basic types of search and examination development of its surrounding environment, frameworks, there are also various other an ideal search and examination system will equally important ways to operate search evolve with time. Further, countries are free and examination work in patent offices. to introduce a step-by-step approach with Countries are free to conduct substantive respect to patent search and examination. examination in limited fields of technol- Patent search and examination work heavily ogy or with respect to the compliance depends on skills and competencies of each with certain patentability requirements. examiner, which can be developed mostly Further, various international cooperation through his/her experiences. Therefore, mechanisms, programs and initiatives gradually enlarging the scope and extent of have been developed and employed in patent search and examination is an option order to maximize efficiency and produc- for patent offices, particularly those that have tivity of national patent offices. limited experience in this area.

To operate effectively and sustainably, a patent office should be innovative in finding the best option available within its resources and according to its specific circumstances.

3 Policy Guide on Alternatives in Patent Search and Examination

Factors Determining the or by non-residents who file national ap- Choice of a Search plications directly with the office, is anoth- and Examination System er factor to be considered. If the majority of applications are filed by non-residents, The ideal patent search and examination the likelihood is higher that search and system may differ from one office to an- examination work products prepared by other. To choose from various options other offices on the same invention are available for designing a search and ex- available, and consequently international amination system, the following factors, cooperation may be beneficial. although non-exhaustive, may be taken into account. National Policy and Rational Allocation of Resources Workload and the Origin of Applications Substantive patent examination is often regarded as a gatekeeper that prevents The demand for patents in the country frivolous and substandard patents to be concerned, as measured, for example, granted. Therefore, the introduction of by the number of patent applications, search and examination process in the shapes what constitutes an adequate national patent system has been high- administrative system. The size of the lighted in the context of national devel- market, the type and extent of industri- opment and innovation policies. al activities or the overall population of the country, may relate to the number of At the same time, a patent office needs patent applications filed in that country. significant financial and human resourc- Since the number of patent applications es to conduct search and examination and patent grants directly affect fee in- by itself. A high degree of technical and come, the demand for patents in the legal expertise – not only to understand country concerned relates to the financial the technical aspect of inventions, but sustainability of the patent office’s search also to interpret the legal scope of patent and examination system. For example, claims and to analyze the compliance if the number of patent application is with the legal requirements prescribed in very small or concentrated mainly in one a patent law – is required to carry out a full technological field, employing qualified set of patent examination. Consequently, substantive examiners across all fields there is an opportunity cost in not being of technology may require justification. able to employ highly skilled scientists and engineers in R&D in national prior- The main origin of the incoming applica- ity areas. Moreover, a sufficient techni- tions, i.e., whether applications are filed cal infrastructure (such as databases) by residents, by non-residents using the need to be maintained in a patent office Patent Cooperation Treaty (PCT) system to conduct a thorough prior art search.

4 Policy Guide on Alternatives in Patent Search and Examination

Fig. 2 Share of Resident and Non-Resident Patent Applications Share of patent applications filing at selected offices, 2012 Resident direct lings Non-resident direct lings PCT National Phase entries

100% 90% 80% 70% 60% 50% 40% 30% Share of applications of Share 20% 10% 0%

India Israel Brazil Japan China Canada Mexico Australia Malaysia Thailand Germany Singapore South Africa New Zealand

RussianFederation Republic of Korea

European Patent Of ce United States of America Patent of ces

Source: WIPO Statistics Database, June 2014

These costs should be weighed against that has a solid substantive examination the various advantages that the search team in all fields of technology influences and examination process could bring to filing behaviors of applicants and has a the patent system, for example, increased significant impact on national strategy re- legal certainty. garding patent search and examination.

The Availability of International/ Regional Frameworks and the Possibility of Cooperation

The availability of international and regional frameworks that assist national search and examination affects the design of national search and examination practices since, in general, international and regional frameworks reduce the ad- 2 For example, the African Intellectual Property ministrative burden of the countries in- Organization (OAPI), African Regional volved and support a better output of the Intellectual Property Organization (ARIPO), patent system, both in terms of quality Eurasian patent Office (EAPO), European Patent Office (EPO) or the Patent Office and efficiency. For example, the avail- of the Cooperation Council for the Arab ability of a regional patent organization 2 States of the Gulf (GCC Patent Office).

5 Policy Guide on Alternatives in Patent Search and Examination

However, the possibility of international Options for a Search and cooperation depends on many factors. Examination Framework For example, since search and examination reports are prepared in the language The following parts of this Policy Guide of each patent office, examiners with the describe various legal, procedural and same linguistic ability can facilitate greater practical options in the area of patent international cooperation among offices. search and examination.

In general, patent search and examination can be categorized into three frameworks: (i) formality examination only; (ii) formality examination and prior art search; and (iii) formality examination, prior art search and substantive examination. Each framework has its advantages and disadvantages, as depicted in Fig.3.

Formality Examination Only

A patent may be granted, or a patent application may be refused, following formality examination during which compliance with the formality requirements (for example, form and contents of a patent application, submission of required state- ments and documentation) is examined. In general, no technical or scientific background is required to conduct formality examination. With the development of automated business processes for IP administration, formality examination is more and more facilitate by computer software.

Since no prior art search and substantive examination are conducted by a patent office, granted patents may or may not meet the substantive patentability criteria. If a patent does not comply with all the patentability requirements, third parties, such as competitors, can file a

6 Policy Guide on Alternatives in Patent Search and Examination

Fig. 3 Search and Examination Frameworks

Procedure Resource Patent of ce Likelihood of Intensity Expenditure Patent Validity

Formality Examination low low low simple Prior Art Search

Substantive Examination complex high high high

request for the review of the decision to the post-grant phase may lead to an made by the patent office. Such a request efficiency gain for the society at large. is usually filed with a court either by an interested third party for nullification of Formality Examination a patent or by the alleged infringer, as and Prior Art Search a defense, in an action for infringement. Once a patent application is filed and This type of so-called registration system the formality requirements are checked, defers substantive examination on pat- an examiner establishes a search report entability until a patent is actually litigated. following a prior art search. If the formality On the one hand, the patentability require- requirements are met, a patent may then ments are evaluated by a court with re- be granted without substantive examina- spect to commercially relevant inventions tion as to the patentability of the invention, only, thus this framework leads to con- and the search report is published togeth- siderable social cost-saving in terms of er with the granted patent. the patent office’s spending, allowing the country to allocate its resources to other On the one hand, the procedure is less areas of priority. However, the costs for complex than that of a full substantive evaluating the patentability of inventions examination. On the other hand, the are transferred to the post-grant phase. patent office should have the resources In particular, courts have to deal with cor- necessary to maintain up-to-date prior rection of erroneously granted patents, art databases. In general, technical or sci- and patent owners and third parties must entific background is required to conduct bear a greater uncertainty of the validity prior art search. Examiners should have a of granted patents as well as litigation general understanding on the patentability costs. If, however, the number of court requirements and a skill to interpret patent cases is very small, shifting the costs for claims. Although the search reports do not evaluating the patentability of inventions contain a detailed analysis on compliance

7 Policy Guide on Alternatives in Patent Search and Examination

with the patentability requirements, pub- The challenges for patent offices with lished search reports that list relevant prior limited resources may be addressed in art documents allow third parties to better different ways. For example: assess the validity of the granted patents. • carrying out substantive examination, Formality Examination, Prior Art fully or partly, in cooperation with tech- Search and Substantive Examination nical experts outside a patent office (for example, scientists in universities Once a patent application is filed and the and research institutions), while main- formality requirements are checked and taining the autonomy of the patent of- met, an examiner conducts a prior art fice to make a final decision on grant search and substantive examination. If of a patent. In order to successfully all the requirements under the applicable utilize the technical knowledge of ex- law are met, a patent will be granted. In ternal experts for patent search and addition to the expertise required for prior examination, examiners should be fully art searches, examiners should have a trained on the applicable patent law competence for analyzing the scope of and patent search and examination patent claims and relevant prior art as skills. Appropriate measures should well as for determining the compliance also be taken in order to maintain the with the legal requirements prescribed confidentiality of information con- in a patent law. tained in patent dossiers, especially by way of a contractual framework; Since compliance with legal requirements is fully examined before grant of a patent, • limiting substantive examination to granted patents enjoy a higher likelihood certain strategic fields of technology of validity if challenged. This provides le- for the country concerned. Applica- gal certainty for both patentees and third tions relating to other fields of tech- parties, and increases confidence in the nology may be subject to formality patent system by society at large. How- examination only or to outsourcing ever, maintaining a search and examina- either within or outside the country. tion system requires substantial human and financial resources, for example, to Another way of responding to the chal- hire and continuously train qualified ex- lenges posed by limited resources is to aminers in all fields of technology, while restrict substantive examination to check- maintaining and upgrading the technical ing the compliance with some, but not all, infrastructure (such as databases) for pri- of the criteria to be met for a patent to be or art searches. granted, for example, patentable subject matter, unity of invention and the disclo- sure requirement. In order to examine those requirements, patent offices do not

8 Policy Guide on Alternatives in Patent Search and Examination need to maintain prior art search tools, Practical Options and which can be costly. Examiners, however, International Cooperation need comprehensive knowledge of the in Conducting Search and applicable patent law in order to make Examination sound decisions on compliance with the above requirements, which are not nec- For patent offices that have chosen to essarily easy to apply. Another option to conduct search and substantive exam- limit substantive examination could be to ination, international cooperation may verify compliance with novelty and indus- be available to assist them in conducting trial applicability, but not obviousness or search and examination more effectively inventive step. This would require prior art and efficiently. A number of patent offices search tools, but examiners don’t need are using search and examination exper- to carry out a complex analysis of the in- tise and work products of other offices, volvement of inventive step (obviousness). and are working together in various ways.

The most conventional and well-known cooperation mechanism in the international patent system is the Patent Coop- eration Treaty (PCT). 3 Other cooperation mechanisms include regional patent or- ganizations, in which search and examination of regional applications are carried out and patents are granted for Member States of the region. Some patent offices have concluded bilateral agreements with other offices, under which one office takes advantage of the search and examination capacity available in another office. In addition, since, in many cases, a significant number of incoming applications have been filed with another or

3 The Patent Cooperation Treaty (PCT) assists applicants in seeking patent protection internationally for their inventions, helps patent offices with their patent granting decisions, and facilitates public access to a wealth of technical information relating to those inventions. By filing one international patent application under the PCT, applicants can simultaneously seek protection for an invention in around 150 countries throughout the world.

9 Policy Guide on Alternatives in Patent Search and Examination

Fig. 4 International Cooperation in Search and Examination

Sharing Search and Sharing Search and Examination Work Products Examination Capacity

PCT System

Of ce Driven • Outsourcing • Regional framework (ex. ASPEC, PROSUR, • Regional cooperation Vancouver Group) framework (ex. • Bilateral framework (ex. SHARE pilot, CADOPAT) UKIPO-USPTO Work Sharing Initiative) • WIPO International • Utilization of information concerning Cooperation for corresponding foreign applications and grants, Examination of Inventions submitted by applicants (ICE)

Applicant Driven • Patent Prosecution Highway (PPH)

Systematic replacement of a part or all of the search and examination process by evidence indicating the equivalent work done by certain other of ces (modi ed examination).

Examination by a Regional Patent Of ce

several other patent offices, a number of dum of understanding (MOU) between offices have been utilizing the external patent offices. Even in the absence of search and examination work products of such formal or informal agreements, such other offices and other information many patent examiners unilaterally use, regarding the prosecution of correspond- if appropriate, search and examination ing foreign applications and patents (for reports as well as other useful information example, information made available issued by other offices in order to facil- during the opposition procedure). itate the examination of corresponding national applications. Cooperation among patent offices can be carried out under a formal framework International cooperation in the area of such as a treaty or a bilateral agreement search and examination does not imply between countries. They can also coop- the automatic recognition of examination erate in a more informal setting, such as decisions made by foreign patent offic- exchanging or allowing access to search es. Each patent office retains its auton- and examination data under a memoran- omy and sovereignty to decide to grant

10 Policy Guide on Alternatives in Patent Search and Examination

a patent or to refuse a patent application Utilization of PCT Work Products based on its applicable law. International cooperation on search and examination The Patent Cooperation Treaty (PCT) of- is intended to assist examiners to make fers applicants an alternative route ad- more informed decisions by providing vantageous for filing applications abroad. additional prior art information and ana- One of the aims of the PCT is to increase lytical findings of other examiners. Exam- the likelihood of granting high quality pat- iners use such additional information only ents through international cooperation. to the extent possible and as applicable High quality patents are likely to withstand under the respective national law, and a validity challenge in the national court may perform further examination work system by meeting all the conditions of as necessary. patentability under the applicable law.

There are challenges in implementing International applications under the PCT international cooperation. In order to ef- are subject to international search by In- fectively retrieve and utilize search and ex- ternational Searching Authorities, and amination work products of other offices, upon request by an applicant, internation- examiners need the knowledge and skills al preliminary examination by International sufficient to understand the divergence of Preliminary Examining Authorities. Those national, regional and the PCT rules and Authorities, i.e., patent offices whose ex- practices, for example, regarding claim in- pertise in the matter of searching and terpretation and assessment of amended examining patent applications is generally claims. In addition, search and examina- recognized, issue the PCT International tion reports may be unavailable in a timely Search Reports, Written Opinions and manner for subsequent use by other offic- International Preliminary Reports on Pat- es due to differences in patent prosecu- entability. Such reports, while not binding tion and examination procedures among on offices of PCT Contracting States, can countries. Therefore, international coop- be used by the offices for the determina- eration initiatives often incorporate educa- tion of patentability of inventions, once a tional and exchange programs for examin- PCT international application enters into ers from participating offices. Further, as the national phase. The Reports are all offices normally produce their commu- translated into English and established nications and reports in their official lan- in a standard format. guage, examiners in other countries may face difficulties in using such documents. The cooperation mechanism established by the PCT allows patent offices to have a The following paragraphs describe vari- “flying start” in their search and examina- ous options that have been deployed by tion work by using international Reports, patent offices. rather than starting search and examination from scratch in complete isolation.

11 Policy Guide on Alternatives in Patent Search and Examination

At the same time, patent offices have full control over national procedures, and BOX 2: PCT as a Tool for Effective Search their patent granting decisions are based and Examination on the substantive patentability criteria prescribed in their respective national law. The likelihood of granting high quality patents at the national phase follows from International The PATENTSCOPE website provides all Search Reports, Written Opinions and Inter- the information concerning PCT interna- national Preliminary Reports on Patentability tional applications, including international that meet high level of internationally regulated reports and written opinions, as well as standards. The high level of standards applies to the national phase entry data of some not only the contents of such international Re- patent offices. Accordingly, additional ports, but also the timeliness of the preparation search and examination information of of those Reports and the quality management counterpart applications in the national system deployed by International Searching phase is also available for examiners. and Preliminary Examining Authorities. Efforts Such additional national information has continue on improving the PCT so that the a value complementary to the Interna- system can function more effectively for the tional Search Reports, Written Opinions benefit of all stakeholders. and International Preliminary Reports on Patentability. The United Kingdom Intellectual Property Office (UKIPO), for example, shows a high level of At the global level, the share of PCT in- confidence to the PCT system. In the United ternational applications entering into the Kingdom, applicants may request accelerated national phase out of the total number examination in the national phase, if their of non-resident applications was around PCT international application has received a 55% in 2012. This share varies across in- positive International Preliminary Report on dividual offices. For example, the share at Patentability. the patent offices of Brazil, Israel, Malay- sia, South Africa and Vietnam were above 85%. Since the PCT is a major tool for filing patent applications abroad, the benefits Sharing and Utilization of Search that derive from the utilization of the PCT and Examination Work Products work products should be fully explored Prepared by Other Offices and enjoyed by its Contracting States. Compared with other industrial property rights such as trademarks and industrial designs, patents have an international character in the sense that patent applications exhibit the highest share of non-resident applications – at the global level, 35%.

12 Policy Guide on Alternatives in Patent Search and Examination

In general, the share of non-resident ap- For example, the WIPO Centralized Ac- plications is very high in developing coun- cess to Search and Examination (WIPO tries. For example, it is above 90% in the CASE) provides a web-based platform to offices of the countries, such as Guatema- share information with regard to search la, Mexico, Philippines and South Africa. and examination among participating pat- Most non-resident applications are filed ent offices. Any patent office may join the in more than one country, claiming the WIPO CASE system by notifying WIPO priority of an earlier application. Although according to the Framework provisions of many of them are filed via the PCT route, the system. The office will choose wheth- in certain countries, a significant num- er it wishes to be a depositing office (mak- ber of foreign applications are filed di- ing available its search and examination rectly with a patent office (Paris 4 route). documentation to other offices) or only an Although corresponding foreign appli- accessing office (access to search and cations might contain a different set of examination documentation uploaded by claims and the substantive patentability other offices). criteria may be implemented differently under the relevant national laws, informa- Modified examination tion concerning prior art search, grant or refusal of corresponding foreign applica- Some countries (for example, Australia tions may provide additional information and Malaysia) allow the systematic re- which can be utilized by examiners to placement of a part or all of the national assist or improve the search and exam- search and examination process by ev- ination of national applications. idence that equivalent work has already been done by another (recognized) patent Some patent offices have set up mecha- office with respect to the same invention nisms that allow systematic exchange of claimed in a counterpart application. such useful information between them. Further, in some countries, applicants Regional sharing of search and are required to submit such information examination work products to their patent offices. Development of information and communication technology Often under an existing regional frame- makes it easier for patent offices to store, work, some patent offices systematical- share and retrieve information gathered ly share search and examination reports during the prosecution of patent appli- among themselves to support their national cations, including information that is rel- work. These include ASEAN Patent Exam- evant to patent search and examination. ination Co-operation Program (ASPEC) 5,

5 ASPEC is a work-sharing program among 4 The Paris Convention for the intellectual property offices of the Member Protection of Industrial Property. States of the Association of Southeast Asian

13 Policy Guide on Alternatives in Patent Search and Examination

PROSUR 6 and the Vancouver Group 7. Similarly, in some regional offices, where BOX 3: Submission by Applicants of a regional patent application claims priority Information concerning Corresponding of an earlier national patent application filed Foreign Applications and Grants with its Member State, a national search and examination report of the correspond- To assist examiners in examining applications ing national application is utilized for exam- that are part of a patent family, a number of ination of the regional patent application. national laws require that an applicant provide information concerning corresponding foreign Bilateral framework for sharing search applications and grants. While national laws and examination work products vary, typically applicants are required to submit: (i) filing dates and application/patent Some patent offices have made bilateral numbers of corresponding foreign applications arrangements so that search and exam- and patents; (ii) a copy of any communication ination work products of one office are received by the applicant concerning the made available to another office for re- results of search or examination; (iii) a copy utilization. Examples of such cooperation of any decision (patent grant or refusal) on include the SHARE pilot project between the foreign application; (iv) a copy of any the Korean Intellectual Property Office corresponding foreign patent; and (v) a copy (KIPO) and the United States Patent and of any decision invalidating the correspond- Trademark Office (USPTO) and the UKI- ing foreign patent. Applicants may submit PO-USPTO Work Sharing Initiative. comments with respect to those documents. Depending on the national law, applicants may Unilateral use of foreign work products be required to submit such information in all cases, or to do so upon request of the office, Many offices unilaterally decide to use once the digitization of prosecution history search and examination reports as well as information (such as search and examination other useful information issued by other reports, correspondences from applicants and offices in order to facilitate the examina- office notifications) is completed, offices may tion of corresponding national applica- be able to directly share such information on the databases, without asking applicants to submit the relevant information. Nations (ASEAN), namely, Brunei Darussalam, Cambodia, Lao People’s Democratic Republic, Indonesia, Malaysia, Myanmar, Philippines, Singapore, Thailand and Viet Nam. tions. Indeed, some national laws require, 6 PROSUR is a system for technical cooperation among industrial property offices in or give the patent office the authority to Argentina, Brazil, Chile, Colombia, Ecuador, require, that applicants submit informa- Paraguay, Peru, Suriname and Uruguay. tion concerning corresponding foreign 7 The Vancouver Group was established between the intellectual property offices of applications and grants (see Box 3). Australia, Canada and the United Kingdom.

14 Policy Guide on Alternatives in Patent Search and Examination

In the absence of such requirement un- Under some of the bilateral PPH agree- der the national law, examiners may still ments and the Global PPH, applicants retrieve at least part of such information may also request accelerated examina- directly from public on-line databases of tion on the basis of positive results of some other patent offices or from sources the written opinion of the International such as PATENTSCOPE. Searching Authority, the written opinion of the International Preliminary Examining Patent Prosecution Highway (PPH) Authority or the International Preliminary Examination Report issued within the Under the bilateral Patent Prosecution framework of the PCT. Highway (PPH) agreements, if the claims of an application are found patentable by Since the PPH procedure is triggered the office of first filing (OFF), an applicant by a request from an applicant, it is dis- may request accelerated examination of tinct from other mechanisms that aim corresponding claims in a corresponding at sharing comprehensive search and application at the office of the second examination work products as well as filing (OSF). The accelerated examination other relevant information between patent procedures allow applicants to reach final offices. In countries where nationals file examination decision at the OSF more patent applications predominantly in their quickly. At the same time, the OSF can country only, they would not be able to utilize the search and examination result enjoy the accelerated examination proce- of the OFF in considering the compliance dure embedded in the PPH mechanism, with the patentability requirements under although under certain circumstances, the national law of the OSF. The OSF’s some offices offer accelerated examina- use of the work product of the OFF allows tion schemes also for national applicants. for a better starting point for examination at the OSF’s office. The usability of earlier examination work products in the PPH mechanism by the Applying the same PPH principle, some OSF is presumably high, since substan- patent offices concluded agreements tive examination was carried out with which integrate bilateral schemes to respect to the same or corresponding a plurilateral all-inclusive scheme. A claims in the OFF. Consequently, it is multi-party PPH allows applicants to re- expected that the examination work in quest an accelerated examination of a corresponding application at any of the participating office if the claims of the application are found allowable by any 8 The European Patent Office, the Japan Patent other participating office. Such initiatives Office, the Korean Intellectual Property Office, the State Intellectual Property Office of China 8 are IP5 PPH pilot program and the Global and the United States Patent and Trademark Patent Prosecution Highway (GPPH) pilot. office.

15 Policy Guide on Alternatives in Patent Search and Examination

the OSF is facilitated and a pendency cally extended to its Member States or period for patent examination will be re- applicable in the Member States in which duced. The benefit of such a reduced a regional patent is validated. examination pendency period can be enjoyed by all applicants, including na- WIPO International Cooperation for tional applicants who do not use the PPH Examination of Inventions (ICE) program mechanism. The Offices of developing countries and Using Other Offices’ Search least developed countries may use the and Examination Capacity WIPO International Cooperation for Ex- amination of Inventions (ICE) program, Outsourcing which is intended to assist them in examining pending applications with no pri- Some patent offices outsource search ority or no search report. Upon request, and examination work to other offices that a collaborating office participating in the are equipped for substantive examina- ICE program will prepare a search and tion, either paying for the service or on a examination report. voluntary cooperation basis. Outsourcing can be conducted with respect to all applications or a subset (for example, certain fields of technology) of applications. It can be based on a bilateral agreement, or a regional agreement involving a number of countries, such as CADOPAT 9.

Regional Patent Offices

The establishment of a regional patent office by pooling the resources of its Member States makes it possible for the regional office to conduct substantive examination. The legal effect of the result of such examination is either automati-

9 Through CADOPAC created in 2007, Mexico provides substantive patent examination support services to Belize, Costa Rica, Colombia, Cuba, the Dominican Republic, Ecuador, El Salvador, Guatemala, Honduras, Nicaragua, Panama, Paraguay, Uruguay, Egypt and the Member States of ARIPO.

16 Policy Guide on Alternatives in Patent Search and Examination

Options for the Procedural for the submission of such information, Aspects of Substantive and no fee is required, although the na- Examination tional laws may vary in details. In some countries, an anonymous submission of In addition to the practical ways of con- information is allowed. ducting search and examination, national/ regional offices may find various options The third party observation system is for designing the procedural aspects of relatively simple to implement. Once the substantive examination, which can also submitted prior art information is included improve the efficiency and effectiveness in the public file, even if an examiner did of search and examination. not use that information, it may be used by other third parties in evaluating the Submission of Prior Art validity of the patent. Information by Applicants Pre-Grant Opposition In order to assist examiners in conducting substantive examination, some national Some countries have introduced a pre- laws require that an applicant submit to grant opposition system in order to assist, the office information about prior art doc- or supplement, search and examination uments that are known at the time of filing by patent examiners. In some countries, a patent application. In the United States an opposition period is triggered by the of America, applicants are required to 18 month publication and carried out be- continuously supply any newly discov- fore substantive examination. In other ered prior art that the examiner would find countries, an opposition period starts material to the examination throughout once a patent examiner has completed the procedure before the office. substantive examination with a positive result – the general public is thus given Third Party Observations the possibility of challenging a positive decision of the examiner before it be- In order to inform substantive examina- comes final. National laws vary on the tion, some countries as well as the PCT procedural and substantive requirements system allow third parties to submit rele- for an opposition system. vant prior art information. While examiners may take into account the submitted Compared with the implementation of information, the third party observation third party observations, a pre-grant op- mechanism typically does not trigger any position system allows a thorough inves- specific inter partes procedure, and the tigation of the case. At the same time, it submitted information is simply included requires: (i) setting up administrative inter in the file which can be consulted by the partes procedures that allow participa- public. In general, there is no time limit tion of both applicants and third parties

17 Policy Guide on Alternatives in Patent Search and Examination

in the process; and (ii) the availability of significant number of applications are human resources capable to conduct abandoned by applicants through this such procedures efficiently. Pre-grant process, allowing examiners to examine opposition is also controversial because only those applications that are important it might increase the duration and cost for the applicants. However, deferral of of prosecution, which some feel can be examination is sometimes considered gamed by competitors. a disadvantage to competitors and the public who would like to know the allowed Request for Search and/ scope of claims at an earlier time. or Examination Post-Grant Mechanisms for In some countries, search and examina- Reviewing Examination Results tion begins more or less automatically once an application is filed. However, Various options are available in design- in some other countries, a request for ing national/regional mechanisms for research and/or examination has to be sub- viewing patent examination decisions of mitted separately within a certain period patent offices. In general, the decisions after filing a patent application if an appli- made by a patent office are subject to cant wishes to proceed with his/her appli- review by competent courts. In addi- cation. Depending on the national laws: (i) tion, some countries provide, as a first an applicant may request prior art search, instance, administrative procedures to and after the publication of an application challenge examination decisions made and a search report, he/she may request by their patent offices, for example, a examination; (ii) a search report will be post-grant opposition system and/or an prepared for all applications filed and an administrative appeal mechanism. applicant may request examination; or (iii) an applicant may file a single request Compared with court procedures, those covering both search and examination. administrative mechanisms offer, in general, simpler, quicker and less expensive Where deferred examination is allowed, possibilities to challenge decisions made fees are set relatively low for filing, with by examiners. At the same time, it re- substantial additional fees payable at the quires the availability of human resources time that search and/or examination is capable to conduct such post-grant re- requested. Applicants therefore may be view. The benefits of a post-grant admin- motivated to file patent applications and istrative review should be considered to- then wait, using the time to reflect on the gether with the costs to retain competent costs and benefits of proceeding further human resources in the administration to the search and examination stage, tak- as well as the number of cases brought ing into account, for example, the com- to the post-grant administrative review. mercial prospects for the technology. A

18 Policy Guide on Alternatives in Patent Search and Examination

Conclusion tools may be fully exploited in order to address national challenges in relation to The quality of search and examination is search and examination. critical for the legal certainty of the patent system as well as for confidence in the Policy makers should be aware of the fact patent system by society at large. At the that a search and examination policy is a same time, it is well acknowledged that dynamic concept that evolves with time. no one particular search and examina- In that context, while the legal basis has to tion system will serve all patent offices be regulated through legislation, national to that end. laws should maintain certain operational flexibilities so that a patent office may This Policy Guide provides, in a non-ex- have the possibility to choose the search haustive manner, various options relating and examination option most appropriate to patent search and examination that can for the time and circumstances. Naturally, be considered by policy makers. A wide such a choice should be fully in line with range of options are available, from the national strategic goals and progressive legal and institutional framework to pro- development policies. cedures, practical operations and international cooperation. Obviously, introducing all options in the national framework does not necessarily lead to maximizing benefits from the patent system. Each option should be evaluated carefully given the national circumstances.

Both factors internal and external to a patent office may be relevant to the consideration of options. Among them, the origin of applications (for example, resident or non-resident filing, PCT filing or direct filing, countries of origin) and fields of technology of applications are essential data for evaluating the feasibil- ity of potential international cooperation. Development of information and communication technology and digitization of patent information have played a significant role in expanding the opportunities for international cooperation in relation to patent search and examination. Technical

19 Policy Guide on Alternatives in Patent Search and Examination

References

PCT – The International Patent System www.wipo.int/pct/en/

WIPO CASE – Centralized Access to Search and Examination www.wipo.int/case/en/

The International Cooperation for Patent Examination service (ICE) www.wipo.int/patentscope/en/data/ developing_countries.html

PATENTSCOPE patentscope.wipo.int/search/en/search.jsf

WIPO documents CDIP/7/3 and 3ADD “Patent-Related Flexibilities in the Multi- lateral Legal Framework and their Legis- lative Implementation at the National and Regional Levels – Part II”, Chapter V

WIPO document SCP/18/4 “Opposition Systems and Other Administrative Revo- cation and invalidation Systems”

WIPO document SCP/20/8 “Work-sharing Programs among Patent Offices and Use of External Information for Search and Examination”

For more information contact WIPO at www.wipo.int

World Intellectual Property Organization 34, chemin des Colombettes P.O. Box 18 CH-1211 Geneva 20 Switzerland

Tel: + 4122 338 91 11 Fax: + 4122 733 54 28