1. AIPLA Meeting Washington, DC 23 October Impact of Global Dossier and Harmonization on Patent System- Advantages for All
Lawrence T. Welch
Assistant General Patent Counsel
Senior Director, Patent Operations
© 2014 Eli Lilly and Company

2. Harmonization Vision of Users
A system which allows for uniform, objective, predictable, and cost effective acquisition and enforcement of patents globally
This would be good for all stakeholders.
9/22/2018
Company Confidential © 2014 Eli Lilly and Company

3. Group B+ View of Harmonization
Harmonization needs to:
“Be coherent and balanced:
a) Offering a fair level of protection to inventors/applicants from all backgrounds
b) Providing a fair balance between the rights of inventors/applicants and third parties
(ii) Provide legal certainty to inventors/applicants and third parties alike
(iii)Promote high quality patents by ensuring that patent protection is provided only to inventions that are new, involve an inventive step and are capable of industrial application
(iv)Support economic growth:
a) Enabling global patent rights to be acquired in an efficient manner
b) Promoting consistent results in multiple jurisdictions
c) Promoting innovation and competition “
Statement by the Chair, Group B+, Objectives and Principles, /SG/2/ May 2015
9/22/2018
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How do we get there?
Requires the cooperation of the offices
Meetings of Trilateral and IP5 Offices with corresponding Trilateral and IP5 Industry groups has been extraordinary
Many initiatives suggested by users have been rapidly implemented, see, e.g. the following procedural and substantive harmonization successes:
Common App Format (CAF); Common Citation Doc (CCD); XML formats
One Portal Dossier (OPD); WIPO CASE; Global Dossier
Patent Prosecution Highway (PPH); Cooperative Patent Classification (CPC)
9/22/2018
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5. IP5 Procedural Harmonization Projects
Citation of Art (overlaps with the Global Dossier developments
Unity of Invention
Written Description
9/22/2018
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Global Dossier Vision
“[The Global Dossier] will allow users to efficiently access all available information about all applications and patents in the participating offices, and to utilize the electronic services of the offices.”
- Global Dossier Taskforce industry delegation statement 1 March 2013
9/22/2018
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Overall Vision
An efficient, more predictable IP world, with less duplication of effort, more transparency and information sharing between offices, the users and third parties, resulting in higher quality patents worldwide.
9/22/2018
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8. Global Dossier (GD)-Active vs. Passive Components
GD will have two parts
Passive part for Global File accessibility by all
All offices will provide access to the same information in the way which makes most sense for the users of that office
Active part for cross filing of documents by users to more than one office
Both Integrated using “one portal”
Passive part is now available for Examiners in IP5 offices
Public deployment of passive part is now available in most offices, will be available at USPTO November 13 (latest information)
9/22/2018
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Advantages
To Examiners
Facilitated work sharing between offices
Improve quality since common information available across offices
Increased uniformity and potential harmonization
To Applicants
Will be able to monitor global portfolio
More uniformity in patent coverage
Reduce litigation risk of inconsistent arguments
Reduce ID5 burdens
Reduce costs
To Third Parties
Facilitate searching
Reduce litigation costs
Ease due diligence opinions
Reduce translation burdens
9/22/2018
Company Confidential © 2014 Eli Lilly and Company

10. Future Vision- User Views
Global Dossier future Vision for Future Improvements– Endorsed by IP5 Heads in May 7, 2015 Alerting: Provide timely updates to users on status or file wrapper changes to all IP5 family members of an application being watched XML Based Documents Maintain focus on the increasing provision by IP5 offices of all file wrapper documents in XML Applicant name standardization Harmonize and normalize applicant names across IP5 patent document Collections Legal status Agree on the sharing approach for legal status reporting of patents and applications across the IP5 Proof of Concept (Applicant Initiated Inter-Office Document Exchange) Demonstrate the feasibility of cross filing documents or changes over the entire IP5 using an example submission achievable in today’s IP5 legal framewor
9/22/2018
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11. Citation of Art- User Views
If it is publically available to examiner, it should satisfy the applicant’s duty to cite the art
Should be an expectation and an obligation for examiner to consult documents in GD
Format should be the same in all offices
Minimize the burden for all
Provide maximum transparency to all offices and public
Open to other non-IP5 offices (e.g. India? Section 8 concerns)
9/22/2018
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12. Substantive Harmonization
Discussions between Trilateral Industry Group and B+ Group has limited the issues
Grace Period (a.k.a. non-prejudicial disclosures)
Prior User Rights
Conflicting applications (prior are effect of prior filed, later published applications)
How to implement any changes
9/22/2018
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Grace Period
Limited to disclosures from the inventor
Includes misappropriation or “evident abuse”
Would not include independent third party disclosures not derived from inventor
What is not yet clear:
Will declarations or disclosures be required to take advantage of the grace period?
When, and under what conditions?
What is the sanction for failing to provide?
How long? (12 months?)
Commencement date (from priority date)
9/22/2018
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Prior User Rights
Would provide an exemption for a “good faith” exploitation of a claimed invention by a third party occurring prior to the effective filing date of a patent
Requires serious and effective efforts prior to filing date
Issues include territorial scope, and definition of good faith
9/22/2018
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15. Conflicting Applications
How do we reconcile the disparate treatment of prior filed, later published applications, i.e., the use of a first-filed application as prior art against a second-filed application.
Trilateral offices have three different approaches:
Prior art used for novelty, enlarged novelty, or also with inventive step.
Other open issues include “self collision,” i.e., use of applicants own prior disclosure and treatment of PCT applications.
Should a published PCT application become prior art for all designations
9/22/2018
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16. What Should Be The Overall Goal?
We should work for a system that is best for owners, third parties, the offices, and other users of the system.
A “one stop” system should insure accuracy and quality with a minimum of duplication and in a cost effective manner.
Ultimately, this benefits all stakeholders.
Avoiding duplication, while maintaining quality, means less work needs to be done, which may mean that in the short term some participants in the system (e.g., those doing administrative work) will have a lesser role.
However, the goal is to reduce costs and to improve the quality of the system and the resulting rights for all.