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Published byDominic Burns
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Copyright © 2010 IPOS All Rights Reserved How can small and medium sized IP offices search and examine patent applications efficiently and effectively? Would it be possible to exploit search and examination (S&E) work done by other IP offices and if so, how? What experience do some IP offices have in contracting work to other IP offices?
Copyright © 2010 IPOS All Rights Reserved 2 The Singapore Experience Vision Considerations Challenges Possible solutions Decision Continued improvement Going forward
Copyright © 2010 IPOS All Rights Reserved 3 Vision To operate an effective and efficient Patent Office
Copyright © 2010 IPOS All Rights Reserved 4 Introduction of Revised Patent System 1994 Conduct S&E locally? Are there alternatives?
Copyright © 2010 IPOS All Rights Reserved 5 Considerations Singapore is export-oriented Small population; need to avoid contending with R&D institutes for highly qualified technical experts Duplication of S&E activities Anecdotally, it appears only a small number of patents reach full exploitation
Copyright © 2010 IPOS All Rights Reserved 6 Challenges Low level of patent filings from nationals Increasing technical complexity of inventions Expansion of patentable subject matter Shortage of expertise Under-resourced and over-stretched public officers Explosion of patent and non-patent prior art Difficulty in recruiting the full complement of examiners Expected high attrition rate of competent examiners
Copyright © 2010 IPOS All Rights Reserved 7 Possible Solutions To outsource search and examination work to other IP offices? To specialise in particular classes of technology and outsource the rest of S&E work to other IP offices? To rely on S&E reports of certain countries? To rely on international search and examination reports? To work share?
Copyright © 2010 IPOS All Rights Reserved 8 Decision To outsource S&E work To maximise the value of corresponding S&E reports from prescribed IP Offices To maximise the value of corresponding international search reports and international preliminary examination reports Translates to more opportunities for applicants Applicant has a choice of several routes to obtain the grant of a patent
Copyright © 2010 IPOS All Rights Reserved 9 Partners (Examiners) Long term relationship Win-win approach Austrian Patent Office (1995) IP Australia (1995) Danish Patent & Trademark Office (2003) Hungarian Patent Office (2009) Work is distributed according to quota Applicants dont get to choose the examiners Fees are leveled out across the four patent offices
Copyright © 2010 IPOS All Rights Reserved 10 Continued Improvement Since 2005 – annual dialogue among examiners and users and IP associations in Singapore Surveys conducted on service quality of examiners Invitation for written comments from users – consolidated feedback given in advance of meeting
Copyright © 2010 IPOS All Rights Reserved 11 Started June 2010 – biannual newsletters: To share generally patent filing statistics on S&E requests, case briefs of recent decisions and law changes To share individually with examiners their quality service levels Win-win approach connecting IPOS with each Examiner Continued Improvement
Copyright © 2010 IPOS All Rights Reserved 12 LOCAL ROUTE Local Search & Examination (Examiners = IP Australia, Austrian, Danish and Hungarian Patent Offices) FOREIGN ROUTE Reliance on corresponding Search & Examination Results (Patent Offices = AU, CA*, JP, NZ, ROK, UK, US, EPO*) * Applications filed In English NB. For PCT SG national phase entrants, they can rely on their ISR & IPRP (Chap 1 or 2) SG patent laws MIXED ROUTE Reliance on corresponding Search Results + Request for Local Examination
Copyright © 2010 IPOS All Rights Reserved 13 Going Forward Proposal: Could WIPO provide value added services of Aggregation and Coordination of patent S&E services (ACSES) for countries that are prepared to outsource their S&E work?
Copyright © 2010 IPOS All Rights Reserved 14 How is ACSES different from WIPOs International Cooperation for the Search and Examination of Inventions (ICSEI) programme?
Copyright © 2010 IPOS All Rights Reserved 15 ACSES Open to all interested IP Offices – countries with no S&E expertise or lacking in expertise in certain fields, large offices with backlog problems Centralised quality control Monitoring of service standards and timeliness ICSEI For developing countries and ARIPO only
Copyright © 2010 IPOS All Rights Reserved 16 ACSES Provides for further written opinions or correspondence upon receiving the opinion of the examiners Provides for amendments and further correspondence with examiners ICSEI No provision for further written opinions or correspondence
Copyright © 2010 IPOS All Rights Reserved 17 ACSES S&E to be conducted according to the respective countries legislation Possibility of officers from participating IP Offices to be attached to the central monitoring authority for training Likely to be a paid service ICSEI Does not cater to requesting countries legislation Service rendered pro bono
Copyright © 2010 IPOS All Rights Reserved 18 Issues How much will the service fee be? Will there be a fee differential between developed and developing countries? If donor countries are paid, how can we ensure that they continue to contribute to ICSEI?
Copyright © 2010 IPOS All Rights Reserved 19 Pilot We could start with a pilot to test the concept
Copyright © 2010 IPOS All Rights Reserved 20 Thank You
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