US, EU, Japan To Sign Understanding On Patent Applications

By Liza Porteus Viana for Intellectual Property Watch
The United States Patent and Trademark Office, European Patent Office and Japanese Patent Office on Friday will announce the signing of a memorandum of understanding (MOU) on patent applications, Intellectual Property Watch has learned.

The MOU between the three patent offices comes after several days of meetings between government and industry officials in Washington on issues such as how to increase cooperation between the three countries to expedite and decrease redundancy in the patent approval process.

The Friday afternoon announcement will involve an agreement on an alignment of patent application processes.

Intellectual Property Watch also has learned that coinciding with the MOU release will be an announcement that the trilateral countries this week decided to pilot a three-way search service in 2008.

The so-called Tri-Way search-sharing initiative is based upon concurrent search of applications to the same invention in all three trilateral offices at the same time through requests for and the grant of accelerated examination. One office would conduct the initial search of the application and invention, and post the search results and examination determinations on the Trilateral Document Access System for review by other offices and examiners. Supplemental search results and examinations would then be posted on the access system within a certain timeframe.

It also will be announced that the Patent Prosecution Highway (PPH), a pilot project between the JPO and USPTO set to expire on 3 January, 2008, will be implemented on a full-time basis.

Under the PPH, an applicant receiving a ruling from either the JPO or the USPTO that at least one claim in an application is patentable may request that the other office fast track the examination of corresponding claims in corresponding applications. The goal of the PPH is to leverage fast-track patent examination procedures already available in both offices to allow applicants in both countries to obtain corresponding patents faster. It can cut the approval process down from often 24 to 48 months to two to three month, and reduce examination workload, officials said.

“The process works out pretty well … it’s a substantive time-wise savings,” Charles Eloshway, a patent attorney with the USPTO’s intellectual property office, told IPW. “We think it shows a lot of potential … [and] forms a foundation on which to build similar projects.”

Eloshway said there are also talks ongoing to start similar pilot projects in 2008 with the patent offices in the United Kingdom, Canada and Korea.

The trilateral offices examine a majority of all patent applications worldwide. According to the 2007 WIPO Patent Report, 52 percent of all patent applications go to the JPO, USPTO and EPO, while 77 percent go those three plus China’s SIPO and Korea’s intellectual property office. Officials have been talking this week about various ways to reduce the overworked patent system.

New Governance

Manuel Desantes, vice president of the EPO, told Intellectual Property Watch that during this week’s closed trilateral discussions, officials agreed on several items. A key priority is to exploit the work of each other to avoid redundancy.

“After 25 years, we came to the understanding that we could be more efficient through a new governance,” Desantes said. “This new governance means basically that we will increase the use of electronic tools to change among ourselves, instead of so many meetings, and that each project will have a clear leader, which will push” those projects.

Desantes said instead of tackling a broad array of issues, the trilaterals will focus on a few specific goals to throw their energy behind that have the most cross-cooperation, new technologies, and where the users are pushing for earlier results. He could not elaborate on specifically what those areas were, saying “this is a very sensitive matter.” They also have to prioritise the first filings, he added.

“The trilaterals understand clearly that the very challenge is how to improve, how to enhance the exploitation of work … by other offices,” Desantes said. “We have to show our users that in fact, the trilateral is getting real results.”

Desantes also said the trilaterals agreed on a common application format users can utilise in the United States, Japan and Europe. “We have been working on this project since some years ago and we have accomplished the project now,” he said. “There has been a lot of progress made…. The work is done.”

He said the trilaterals will offer this application format to users in early 2008. “This will bring results pretty soon,” Desantes said.

Dudas: Leave Patent Harmonisation to WIPO

The trilaterals worked “very hard” this week on what Desantes called the “small sister” of patent harmonisation – that is, the harmonisation of procedures and best practices. But for the issue of overall patent harmonisation, both the EPO and USPTO Director Jon Dudas told Intellectual Property Watch that is better left for the World Intellectual Property Organization (WIPO) to handle.

“The goal for the United States has always been to try to get patent harmonisation – appropriate patent harmonisation and adoption of best practices throughout the world and we think the best place to do that is WIPO,” Dudas said. The issue stalled at WIPO last year but may have been given new life for the coming year.

The so-called Group B of developing nations are trying to come up with a common position on the issue to report to the WIPO.

“Ultimately, with the goal we can get this done at WIPO. But we just want to see progress on just about any front,” he said.

Dudas said he has been generally happy with the progress made within the Group B+ (trilaterals plus a few others in the EPO) but issues such as grace periods are a sticking point for a number of European countries in the United States’ view. The ideal approach for the United States is 12 months without a declaration, he said.

Dudas said the trilaterals focused a lot on work-sharing and using each other to the maximum extent possible. “I think we have achieved what we wanted to achieve – the key is for us to deepen the cooperation,” he said.

The EPO assumes the leadership of the trilateral group in 2008, following the United States’ leadership this year. Next year’s trilaterals will hold three meetings of their strategic working group, and will have several project group meetings. At the end of the year, they will hold another trilateral meeting with the heads of office to try to consecrate the work done throughout the year.

Liza Porteus Viana may be reached at info@ip-watch.ch.