News Item

Patent office work - sharing initiatives announced

11 December 2008

The patent offices of Europe (EPO), Japan (JPO), China (SIPO), Korea (KIPO) and the United States (USPTO) – known as the IP5 – have announced plans for greater harmonisation in the way patent applications are searched and examined.

Currently up to 250,000 applications are filed at two or more of these five offices per year, and predictions suggest that this number is set to increase. The IP5 are therefore aiming to develop a standardised infrastructure that eliminates unnecessary duplication of work for such applications.

As a step to achieving this goal, ten work-sharing projects are to be implemented over the coming years. These projects include establishing a common documentation database with resource material for patent examinations, common access to search and examination results across offices and a common patent application format.

In addition to supporting this initiative, the Trilateral Offices of the EPO, the JPO, and the USPTO have made known their intention to make efforts on improving the Patent Convention Treaty (PCT) administration processes. The PCT is a simplified system for international filing, with an estimated 150,000 applications filed using this system in 2007 alone.

Discussions to launch a Patent Prosecution Highway (PPH) pilot program between the JPO and EPO also continue. Under the PPH, once an application is considered allowable by one patent office, an applicant may accelerate prosecution for a corresponding application pending before another patent office. A PPH between the JPO and USPTO has already been implemented on a permanent basis, while a PPH pilot program between the EPO and USPTO is currently ongoing.

Other measures announced by the Trilateral Offices to speed up the patent-granting process include their commitment towards improving machine-translated systems and to continue their cooperation on examiner exchange programmes.

Further discussion meetings are scheduled to take place throughout 2009.

It is likely to take some time before applicants feel the full benefits of the planned initiatives. Nevertheless, they mark a promising starting point in the development of office-to-office coordination.

For more information, contact your usual Marks & Clerk attorney or Stephan Schultes at sschultes@marks-clerk.com.