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WPIS WIPO's Patent Information Service for developing countries Current WPIS Analysis of Clients Future Options.

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Presentation on theme: "WPIS WIPO's Patent Information Service for developing countries Current WPIS Analysis of Clients Future Options."— Presentation transcript:

1 WPIS WIPO's Patent Information Service for developing countries Current WPIS Analysis of Clients Future Options

2 WPIS provides free of charge upon request by national IPO: State of the art search reports for private sector and institutions in developing countries > request requires detailed description of technical problem > to be endorsed by national IPO

3 WPIS provides free of charge upon request by national IPO: Search and examination reports for patent applications of IPOs in developing countries > similar to PCT, but for national patent applications ICSEI – International Cooperation on Search and Examination of Inventions

4 WPIS also (still) provides free of charge upon request by national IPO: patent family searches paper copies

5 WPIS was established in the mid 80's WIPO acts mainly as "agent": Requestor <> WIPO <> Donor Search reports done by "donor offices" with expertise in search and examination, based on bilateral agreements with WIPO Some donors contribute only state of the art search reports, others also "written opinions

6 Current donor offices: AR, AT, AU, BR, BG, CA, CH, CU, DE, FI, FR, GB, JP, KR, MX, NO, PT, RU, SE, VE Some statistics state of the art ICSEI

7 WIPO wishes to revise WPIS Delivery of previous service continues as before Section in charge of WPIS was renamed "Patent Information Service Support Section" and transferred to "Global IP Information Service" Lutz Mailander has taken over from Jose-Luis Herce-Vigil in July 2009 Currently investigating needs of our clients

8 Goals of WPIS revision: Focus on capacity building in countries developing their IP infrastructure, e.g. national IPOs should be able to deliver IP information services, e.g. state of the art searches, to their private sector Efficiency of WPIS, avoid duplication of work, aligning with PCT procedures

9 Clients of WPIS Rather than developing countries: IPOs of countries developing their IP infrastructure, in particular patent prosecution Consequence of TRIPS agreement, becoming a member of WTO; of Free Trade Agreements (FTA) Obligations as a PCT member IPOs treating PCT national phase entries and national patent applications

10 PCT national phase entries ISR: 1st set of search and examination report IPO: verify amended claims, top-up searches, communication with applicant national patent applications IPO: has to do all > final responsability for granting and quality

11 Different categories of IPOs as WPIS clients: IPOs just embarking on patent prosecution (e.g. Bahrain, Oman, Bhutan) IPOs having established patent prosecution ("emerging Offices"; e.g. Jordan, Malaysia, Viet Nam)

12 Patent prosecution – different options: Doing full substantive examination (search, examination, granting) Rely on results of other IPOs (for PCT, other priorities): requires identical claims ! Outsourcing full patent prosecution (e.g. Singapore) WPIS is providing support after decision where to go !

13 Patent prosecution – different needs: Developing expertise in substantive examination, patent prosecution in general Support in selected complex technical fields where no (or not yet) experienced examiners are available Access to specialised databases not free of charge for efficient, comprehensive searches.....

14 Ideas/options for future WPIS Covering the whole patent prosecution (and opposition, invalidation ?), beyond just one set of search and examination report, including as well PCT in the national phase: top-up searches of amended claims direct exchange, i.e. tutorship between - an examiner developing expertise and - an examiner having expertise

15 Ideas/options for future WPIS Advantages / benefits of mentorship - clarification of requests - asking questions, discussing: efficient search strategy; assessing inventive step; assessing applicant's reply, amended claims (e.g. PCT); formality issues > Learning by doing, complementing training - Bulding trust, confidence, mutual understanding

16 Ideas/options for future WPIS For IPOs having experience in substantive examination: Support in selected complex technical fields Indirect, mediated access to specialised databases in order to complement searches in free databases Inclusion of legal status searches for patent families

17 Ideas/options for future WPIS Support for cooperation; take into account other cooperation initiatives: Vancouver Group, 9 SA IPOs, ASPEC, AIPN – avoid duplication of work, e.g. by sharing application information, priority claims – mutual use/sharing of search and examination results – using WIPO's platform DAS (Digital Access Service)

18 Ideas/options for future WPIS Training, tutorials for patent prosecution - cooperation with other programs/offices - using material developed by other offices - developing new material Establishing a platform for exchange on best practices

19 Mobilizing /saving resources: Investigating needs of countries developing IP infrastructure, options of cooperation > Ideally user driven Investigating options to broaden participation of "donors" more ICSEI (i.e. written opinions) mentoring inclusion of other donors, e.g. all ISAs

20 Mobilizing /saving resources: Investigating funding options – Discriminate between requesting countries, e.g. LDCs – Free of charge for whom ? – Donors: mix of contributions being free of charge and such with financial compensation – Establishing fund for financing such compensation

21 Thank you!

22 National patent application Applications with foreign priority / PCT Granted / refused patent Examiner with technical expertise Examiner without technical expertise Use foreign results Do own search / complementary ICSEI Do own search / complementary ICSEI ICSEI Interaction with applicant / Decision on what to grant


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