Download SDO and Patent Offices EPO view on cooperation

SDO and Patent Offices :
EPO view on cooperation
Dr Michel Goudelis,
Director Telecommunications, EPO
GSC-15, August 2010
Beijing, China
Introduction
• The awareness of the importance of IPR in relation
with Standards has substantially improved in the
last years.
• The issue of ICT Standards remains an important
priority area for EPO's external relations policy. In
that field a lot of public and political pressure exist
and strengths and weaknesses of the patent
system are magnified.
Tensions are appearing 1/2
• Increased scrutiny "from outside": competition
authorities, politics, courts.
• Principal problem: IPR policies of most SDOs are
confronted with new challenges; rules not clear and/or
not sufficiently enforced.
• As expression of the challenges in the governance of the
global knowledge economy.
• Rising tensions through competing business models but
also because of geopolitical reasons.
Tensions are appearing 2/2
• If patent rights are enforced in a way that may
hamper the widest use of standards, some
antagonism between the two systems may arise.
• Both SDOs and Patent Offices are expected to play
a positive role towards environmentally sound
technologies (joint project EPO-UNEP, including
database for EST-related patents, ITU initiatives in
EST technologies).
Possible conflicts 1/2
• One possible scenario is that a patent owner
who has been participating in the
standard-setting process may conceal existing
patents or pending applications which are
essential to implementation of the standard
under discussion (essential patents) with a view
to enforcing the patent rights only after the
adoption of the standard and refuse to license
the patent on reasonable terms and conditions.
Possible conflicts 2/2
• Another scenario is that an essential patent may be
owned by a patentee who did not participate in the
standard-setting process and who may enforce the
patent rights in a manner that discourages or blocks
implementation of the standard. The latter “hold-up”
problem may also arise where a standard is affected
by a number of patents owned by different
patentees. Even if each patent owner is willing to
license his patent on reasonable terms and
conditions, the total royalty claim may inhibit
implementation of the standard.
EPO Non-Patent Literature (NPL)
Resources
Journals
Conference
Databases of
Secondary publishers
Proceedings
INSPEC,COMPDX,BIOSIS,
MEDLINE,IHS...
Books, Thesis,
Technical reports,
Monographs
Standards
Company
Encyclopaedias,
Disclosures
Dictionaries
Benefits of using Standards at patent
examination
– Benefits:
• for the Patent Office : higher quality products,
better efficiency and improved planning.
• for the public: continuation of high-validity
patent culture and high level of information.
• for the Standardisation bodies: clear picture of
IP-situation.
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
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
External Measures
• Contribute towards transparency:
both in technical (up-to-date, informative databases) and structural
(clear landscapes and boundaries) regard.
• Establish patent related services for SDO's such as: patent search
services and patent landscaping services also for patent pools.
• Cooperation among major Patent Offices (IP5, composed of USPTO,
JPO, KIPO, SIPO, EPO) for a common policy, including a common,
standards-related documentation database.
• In cooperation with WIPO, long term include such documentation as
PCT minimum requirement.
Achievements 1/2
• Bridging the two worlds: Resolutions at Global Standards
Collaboration Conferences GSC 12, 13 and 14, 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".
• Bilateral Cooperation : in form of Memorandum of Understanding or
Partnership Agreement between SDOs and Patent Offices ( MoU EPO
with ETSI, IEEE already signed and MoU with ITU in discussion) in
order to formalise and intensify cooperation.
Achievements 2/2
• Interface amelioration : Suggestion from ITU TSB Director's Ad Hoc
Group on IPR to ITU 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.
• ETSI recommendation to encourage the use of a document template to
facilitate the work of patent examiners and to improve prior art
identification.
• IEEE-SA documentation format definition and dissemination policies
aligned as much as possible to the patent search needs.
• Cooperation with ETSI to link their IPR declaration database to the
EPO patent database.
Conclusions
• Standardisation organisation should link their IP declarations
databases to the public registers of the major Patent Offices,
such that the included information (validity of application,
scope of granted patents, patent family, etc.) is constantly
updated and valid.
• Patent rules of standardisation organisations, in particular
dissemination and confidentiality rules, should be clear.
• Proper functioning of both systems necessitates resolution of
potential conflicts.
• Patent authorities should become pro-active and include
standards-related documentation in their search databases.