VANCOUVER GROUP MUTUAL EXPLOITATION

Collaboration between UK, Canada

and Australia

Fatima BeattieDeputy Director General, IP Australia

Patent Backlogs and Mutual Recognition: An Economic Study, 10 March 2010, London, UK

About the Vancouver Group

• Established in April 2008 (during a meeting in Vancouver, Canada) between the IP offices of the UK, Canada and Australia– Similar sized developed offices– Similar legal heritage– Long standing relationships

Aim:• share information and experiences on common issues and areas

relevant to managing a mid-sized national IP office; and• through this collaboration contribute to a more effective multilateral

approach to work sharing.

Patent Backlogs and Mutual Recognition: An Economic Study, 10 March 2010, London, UK

• Mutual Exploitation of Patents (lead office: Australia)

• Economic Research (lead office: UK)

• Business Performance Reporting (lead office: Canada)

• Trade Marks Business Processes (lead office: Australia)

– Highest priority being given to the first two initiatives.

Areas of focus

Patent Backlogs and Mutual Recognition: An Economic Study, 10 March 2010, London, UK

Areas of focus- Patents work sharing

• Priority – endeavour to eliminate unnecessary rework and duplication in prosecuting patent applications in the three offices.

• To this end, undertaken:

Examiner Exchange:• Compared search and examination outcomes on 28 national

Canadian applications:• full search and opinion on 20 pending applications• 8 granted patents, with accepted family members in UK and

Australian offices

Comparison of quality standards and processes

Outcomes: Vancouver Group Mutual Exploitation Initiative• Mutual exploitation of each office’s work is tenable• Agreed set of principles for moving forward

Patent Backlogs and Mutual Recognition: An Economic Study, 10 March 2010, London, UK

Core Principles

Office Driven:

• Patent granted by another VGO; or • on the search and examination

report of another VGO resulting in an issued report.

• Undertake further work if deemed necessary.

For an equivalent application where possible rely on any:

Applicant Driven:

• VGO has issued an office action where at least once claim is allowable or patent granted.

For an equivalent application may seek accelerated examination if:

• Be simple and efficient

• Be consistent with other arrangement already applying (eg PPH)

• Apply transparently

• Applies to all work done by VGO:– Whether for own jurisdiction or

another jurisdiction

Patent Backlogs and Mutual Recognition: An Economic Study, 10 March 2010, London, UK

Transparency Example

I consider the invention as claimed in claims 1-50, 53 lacks Novelty and further lacks an inventive step in view of the following patents,D1 – FR 2602253D2 – US 3023681D3 – US 3968611D4 – US 6052960(D1 as cited in the ISR, D2 as cited in the Canadian report of 27/12/07, D3 & D4 as cited in the US report of 24/2/09 – all for the corresponding overseas case).

Patent Backlogs and Mutual Recognition: An Economic Study, 10 March 2010, London, UK

Key Enablers

Ready Access to work of the VGOs• Interim secure solution• Longer term enabling platform using WIPO

infrastructure

Confidence building and support• to enhance mutual understanding and promote

greater confidence in one another’s work.

Patent Backlogs and Mutual Recognition: An Economic Study, 10 March 2010, London, UK

Given….• Inter-office access to search and examination reports critical

• Multilateral repository does not yet exist

Vancouver Group and WIPO agreed to a pilot project: development of a digital library of search and examination reports,

accessed via WIPO infrastructure

Intended approach:• Each Office sends reports on national and national phase applications

to WIPO for storage in digital library

• Upon examination, examiners to source available reports done by another Vancouver Group Office from digital library

• If report on equivalent application available, examiner will use this work in accordance with Vancouver Group-ME principles

Ready Access

Patent Backlogs and Mutual Recognition: An Economic Study, 10 March 2010, London, UK

• Started in earnest on 4 February 2010.

• Work in the pipeline- as at 5 March 2010, 21 equivalent applications awaiting access to documents from the other offices.

• 5 applications have been dealt with by Australia and a report has issued, and 7 have been dealt with similarly by Canada.

• Feedback forms collected on the cases show that examiners are applying and finding work done by other offices useful.

Where are we at?

We have embraced this opportunity and enthusiastic about its potential.

Lots of goodwill being shown by VGO examiners.

Patent Backlogs and Mutual Recognition: An Economic Study, 10 March 2010, London, UK

Expected benefits

• Practical model for facilitating work sharing- inherently improve transparency and quality of work done by offices

• Resource for centralised access to search and examination reports - could be extended to other offices

• Positive step forward for offices working together to address common challenges:– increasing (and unsustainable) patent backlogs;

– improving quality of rights;

– minimising unnecessary duplication and inefficiencies in the IP system

• Ultimately, enhance efficiency of the IP system and productivity of offices – in the interest of our customers and the community

Patent Backlogs and Mutual Recognition: An Economic Study, 10 March 2010, London, UK

Next steps…..

• Progress the digital library of search and examination

reports with WIPO et al.

• Continue the work sharing

• Continue confidence building and support

Patent Backlogs and Mutual Recognition: An Economic Study, 10 March 2010, London, UK

Thank You!