SDO and Patent Offices : EPO view on cooperation

Dr Michel Goudelis, Director Telecommunications, EPO

GSC-15, August 2010Beijing, 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.

• 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 1/2

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.

StandardsBooks, Thesis, Technical reports,

Monographs

EPO Non-Patent Literature (NPL) Resources

Databases of Secondary publishers

INSPEC,COMPDX,BIOSIS, MEDLINE,IHS...

JournalsConference

Proceedings

Company

Disclosures

Encyclopaedias,

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

• ContributionsFirst 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

• 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.

External Measures

• 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 1/2

• 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.

Achievements 2/2

• 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.

Conclusions