Across the patent offices of the IP5, an international patent cooperation framework of the five leading patent offices, there has been a growing number of filings and pending applications which have impacted the operation of the international patent system. If no action is taken, the number of pending files could rise to more than 4 million in the near future.
Through cooperative work-sharing projects, the IP5 intends to eliminate the unnecessary duplication of work among the offices while enhancing quality of patent examination. The IP5 expects this foundation of cooperation to guarantee the stability of patent rights across their respective territories.
• IP5 vision
"The IP5 aim to eliminate unnecessary duplication of work among the offices, enhance efficiency of patent examination quality, and guarantee the stability of patent rights." The IP5 agree on the considerable benefits of work-sharing which include a significant increase in examination capacity.
• Quality and Timeliness
In order to achieve the vision, the searches and examinations of all participating offices should be executed to the same high standard of quality and timeliness, taking into account the workload and workflow of each office. Additionally, the results of searches and examinations should be disclosed via methods mutually agreed upon by the IP5.
• Ongoing work-sharing projects
Taking into account the particular circumstances of each office, the IP5 has agreed to continue their ongoing work-sharing projects including the PPH and SHARE programs. The IP5 Heads of Office agree to implement a comprehensive IP5 PPH program. The program will cover both PCT and Paris Route applications and will commence in January 2014.
• PCT as work-sharing platform
The Patent Cooperation Treaty, an international framework for work-sharing, plays a significant role in the work-sharing of the IP5. As the vehicle for work-sharing, the IP5 has agreed to work with WIPO on improving the functioning of the PCT system. While the PCT is a strong platform for work-sharing, the IP5 believe that improvements to the PCT are necessary.
• Patent Harmonization
Acknowledging the importance of patent law harmonization, the IP5 established the IP5 PHEP (Patent Harmonization Expert Panel) to undertake further activities for the harmonization of patent laws.
• Global Dossier/Related E2E IT Projects
The IP5 developed the Global Dossier Concept, which presented a new user-centric perspective to the IP5 Cooperation for 2013-2017 as well as a framework for coordinating IT-related IP5 projects. The IP5 also formed a Global Dossier Task Force consisting of representatives from the IP5, WIPO, and the IP5 Industry to obtain input regarding user needs.
• Involvement of other offices and WIPO
The IP5 emphasizes the importance of open communication with other users of the IP system, especially with other patent offices. When appropriate, the IP5 includes the views of other offices that share the need for action and highlight the necessity of WIPO's involvement in the implementation of Foundation Projects.
• Involvement of examiners
Recognizing the importance of the highly skilled and capable examiners for the implementation of Foundation Projects, the IP5 has proposed common actions to support growth and learning on their part. To encourage full commitment of the examiners, the IP5 offices hold regular workshops which reflect the best practices of each office and facilitate the implementation of the relevant Foundation Projects such as Common Documentation, Common Search and Examination Support Tools, and Common Training Policy.
• Objective and Outline of the Patent Prosecution Highway
The basic concept of the Patent Prosecution Highway (PPH) is as follows: where the office of Earlier Examination(OEE) has assessed the patentability of a patent application, the office of Later Examination (OLE) offers the applicant an accelerated examination for the corresponding application, provided that certain conditions are met. Those conditions include sufficient correspondence in the claims of the two applications and the search and examination results of the OEE being made available to the OLE.
Through the PPH program, the examination results of the OEE are used to expedite the application process in the OLE, thereby reducing the workload and improving patent quality. If deemed patentable by the OEE, the corresponding application is filed in advance for accelerated examination in the OLE.
• Outline of requirements
① An application (including a PCT national application) in the OSF which validly claims priority to an application in the OFF
② An application in the OFF with at least one claim deemed to be patentable/allowable
③ All claims in the OSF application must sufficiently correspond to or be amended to sufficiently correspond to one or more of patentable/allowable claims from the OFF
• Outline of documents to be submitted
① Copies and translations of claims which are deemed patentable in the OFF
② Copies and translations of all office actions in the OFF
③ Copies of references cited by the OFF's examiner
④ A claims correspondence table