Ruud Peters Philips Intellectual Property & Standards September 18, 2009 Towards Global Collaboration 1
Jan 17, 2016
Ruud PetersPhilips Intellectual Property & StandardsSeptember 18, 2009Towards Global Collaboration
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Philips Intellectual Property & Standards, September 18, 2009
Need for uniform, efficient and predictable patent systems around the world*What does industry need?More and more companies operating on global level
Companies need patents in increasingly more countries in support of their business
Open Innovation drives increased need for more global protection
Different patent systems hamper development business and cooperation
Philips Intellectual Property & Standards, September 18, 2009
*What does industry need?Patent systems should provide:High quality patentsTimely deliveredFair cost
High quality patents is interest of both applicants and third partiesGuide R&D investmentsDetermine risks in product developmentCertainty in commercial transactions
PTOs and users have shared responsibility to accomplish goals
Philips Intellectual Property & Standards, September 18, 2009
*Global Patent WarmingGlobalization: more international filings by existing users patent system
New participants patent system in developed countries New users in BRIC-countries: explosion of local filings With growing GDP of BRIC-countries: increasing international filings
Global patent filings will continue to increase
Chart1
199060754382036070425820171163
359555984359536159028133172115
342458896342436219731073183347
1961856974372035550036493184196
1906778499480034120145712202755
1869978499656636883178499228142
2274264035856237667490326211946
10155729041015540161892684220496
4739675233895440209575233236979
5004480642482640445780642265763
519061020108503419543102010295895
6345010461210592440248104612326471
8023210613611465421805106136334445
10624311865112613413093118651342441
14011512370117466423081140115356943
17332712871324505427078160921390733
21019013523128940408674166189425967
24516114143935218396291170711456154
28983814656120083910022008456321
CN
EU
IN
JP
KR
US
Sheet1
Column1CNEUINJPKRUS
199060754382036070425820171163
1991359555984359536159028133172115
1992342458896342436219731073183347
19931961856974372035550036493184196
19941906778499480034120145712202755
19951869978499656636883178499228142
19962274264035856237667490326211946
199710155729041015540161892684220496
19984739675233895440209575233236979
19995004480642482640445780642265763
2000519061020108503419543102010295895
20016345010461210592440248104612326471
20028023210613611465421805106136334445
200310624311865112613413093118651342441
200414011512370117466423081140115356943
200517332712871324505427078160921390733
200621019013523128940408674166189425967
200724516114143935218396291170711456154
2008289838146561391002456321
To resize chart data range, drag lower right corner of range.
Philips Intellectual Property & Standards, September 18, 2009
*Global Patent QualityMajor patent offices have not been able to cope with steep increase in patent filings
Huge backlog of unexamined applications built up (EU > 500K; US > 850K)
Over time it has become easier to get a patent granted
Average amount of R&D investment per patent filing decreased in US
Source: USPTOs annual report combined with US R&D data Average patent quality has decreasedR&D Investment (M$) per patent filing
Chart1
1.191.151998
1.121.111999
1.131.092000
11.042001
0.9312002
0.9550.982003
0.890.942004
0.890.92005
0.90.882006
0.890.842007
Average
Trend
Sheet1
AverageTrendPhilips 2
19981.1901.150
19991.1201.110
20001.1301.0901.180
20011.0001.0401.100
20020.9301.0000.960
20030.9550.9800.850
20040.8900.9400.820
20050.8900.9000.830
20060.9000.8800.870
20070.8900.8400.980
Sheet2
Philips Intellectual Property & Standards, September 18, 2009
*Reaction PTOsPercentage of patents granted by Patent Offices is decreasing This trend is aimed to:slow down growth in patent filingsreduce backlog patent officeslonger term: increase quality
With decreasing economic lifetime of patents (8-10 years) this creates financial problem for PTOs
More front loading instead of back loading patent cost
Chart1
70.41998
70.866
70.967
69.765
6662
66.261
62.559
58.753.3
53.656
50.951
44.249.5
422009
Patent Grant Rates
US
EPO
Sheet1
USEPO
199870.4
199970.866
200070.967
200169.765
20026662
200366.261
200462.559
200558.753.3
200653.656
200750.951
200844.249.5
200942
Sheet1
US
EPO
Philips Intellectual Property & Standards, September 18, 2009
*What needs to be done?Raise the bar to increase quality patents
Examine patents when needed taking into account maintenance practices
Cost may fairly reflect strategic and commercial value patents
A high quality and efficient patent examination is needed
Co-operation among PTOs and users offers gains in quality, efficiency and cost
Philips Intellectual Property & Standards, September 18, 2009
*What Patent Infrastructure should be developed?
The main infrastructure is already in place: PCT
PCT is well established, successful system
When more fully used PCT can help to: reduce patent pendencies reduce backlogs PTOsincrease patent qualityimprove PTO income structure
Both PTOs and users need to contribute to the solution
Philips Intellectual Property & Standards, September 18, 2009
What could be done? Reducing pendencies / backlogs priority of major PTOs.
How can we achieve this objective?
Proposed is 3-step process:Incentivize applicants to use PCTHigh-quality PCT search/examinationRequire applicants to respond to PCT report before designated offices start national search / examination*
Philips Intellectual Property & Standards, September 18, 2009
Why this 3-step process will help
PCT: A single international phase before one office leads to abandonment (double-digit percentages!) before national phase entry and thus less cases to process by all designated offices Significant lower abandonment with national applications. Therefore these give more work.
Increased quality as PCT report is taken into account before designated offices start working.
Improved income structure as because of increased quality PTOs will for higher %-age of all applications receive both procedural fees and maintenance fees.*
Philips Intellectual Property & Standards, September 18, 2009
How does it work?Three step process:Incentivize applicants to use PCTHigh-quality PCT search/examinationRequire applicants to respond to PCT report before designated offices start national search / examination
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Philips Intellectual Property & Standards, September 18, 2009
1. Incentivize applicants to use PCTFor e.g. US national applications entry fees (filing + search + examination) are much lower than similar PCT fees applicants will prefer national US route instead of PCT.
Make entry fees of national applications more expensive but compensate for instance by lowering the issue fee
Will increase front loading fees, which is needed anyhow
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Philips Intellectual Property & Standards, September 18, 2009
How does it work?
Three step process:Incentivize applicants to use PCTHigh-quality PCT search/examination Require applicants to respond to address issues in PCT report before designated offices starts national search / examination
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Philips Intellectual Property & Standards, September 18, 2009
2. High-quality PCT search/examination Quality and extent of PCT search / examination should be at least as good as for national applications.
PCT requires (Art.16(4)) :The ISA shall endeavor to discover as much of the relevant prior art as its facilities permit, and shall, in any case, consult the documentation specified in the Regulations.
The higher the quality and the larger the extent, the higher the dropping-rate and the lower the inflow into the national phase.*
Philips Intellectual Property & Standards, September 18, 2009
2. High-quality PCT search/examination ISA will mostly also be designated office (or a national office in a parallel national application)
Efforts put in PCT search & examination are not wasted as ISA has to do work anyway in the national procedure
Make examination as to disclosure / claims mandatory instead of optional (art. 5/6 PCT)
The more work is done in international phase the better*
Philips Intellectual Property & Standards, September 18, 2009
How does it work?
Three-step process:Incentivize applicants to use PCTHigh-quality PCT search/examinationRequire applicants to respond to PCT report before designated offices starts national search / examination
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Philips Intellectual Property & Standards, September 18, 2009
Philips Intellectual Property & Standards, September 18, 2009*Require applicants to respond to PCT reportApplicant should demonstrate that application meets national requirements notwithstanding PCT objections and make any necessary amendments
Responsibility of designated office remains unaffected
Result:Applicants are forced to think before entering national phaseFewer national phase entriesHigher quality inputNo duplication of efforts by designated office
Philips Intellectual Property & Standards, September 18, 2009
3. Require applicants to respond to PCT report Under New Rule 161(1) EPC applicants have to respond to written opinion before entering national phase
This is step into right direction, but not applicable to Euro-PCT applicants with non-EPO PCT report.
Rule 161(1) EPC should apply to all Euro-PCT applications*
Philips Intellectual Property & Standards, September 18, 2009
Philips Intellectual Property & Standards, September 18, 2009*Three step process in summaryHelps to reduce workload, backlogs and pendencies
Increases quality input of national phase applications
Improves income structure of PTOs
Philips Intellectual Property & Standards, September 18, 2009
Philips Intellectual Property & Standards, September 18, 2009*Patent Prosecution HighwayBasic PPH idea makes sense, but
PPH is not a fundamental solution to reduce workload / pendencies
PPH limited to low percentage of cases; does not work for large number of applications
PPH discourages using PCT: it can only be used if a positive national report is available and not with a positive PCT report.
Philips Intellectual Property & Standards, September 18, 2009
Towards Global CollaborationTo fundamentally address global workload and pendencies:
PCT should be the preferential system, using the 3-step procedure involving high-quality PCT reports and mandatory applicant response upon national phase entry before national phase processing starts
With high-quality PCT reports, no reason anymore to discriminate against PCT reports in PPH framework
As long as PCT is not the preferential system, further PPH developments are putting the cart before the horse* PCT first, PPH second
Philips Intellectual Property & Standards, September 18, 2009
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