wpis wipo's patent information service for developing countries current wpis analysis of...
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WPISWIPO's Patent Information
Service for developing countries
• Current WPIS• Analysis of Clients• Future Options
WPIS provides free of charge upon request by national IPO:
• State of the art search reports for private sector and institutions in developing countries
> request requires detailed description of technical problem
> to be endorsed by national IPO
WPIS provides free of charge upon request by national IPO:
• Search and examination reports for patent applications of IPOs in developing countries
> similar to PCT, but for national patent applications
ICSEI – International Cooperation on Search and Examination of Inventions
WPIS also (still) provides free of charge upon request by national IPO:
• patent family searches
• paper copies
• WPIS was established in the mid 80's
• WIPO acts mainly as "agent":
Requestor <> WIPO <> Donor
• Search reports done by "donor offices" with expertise in search and examination, based on bilateral agreements with WIPO
• Some donors contribute only state of the art search reports, others also "written opinions
• Current donor offices:
AR, AT, AU, BR, BG, CA, CH, CU, DE, FI, FR, GB, JP, KR, MX, NO, PT, RU, SE, VE
• Some statistics
state of the art ICSEI
2009 490 2402008 1039 2662007 1077 225
► WIPO wishes to revise WPIS
• Delivery of previous service continues as before
• Section in charge of WPIS was renamed "Patent Information Service Support Section" and transferred to "Global IP Information Service"
• Lutz Mailander has taken over from Jose-Luis Herce-Vigil in July 2009
• Currently investigating needs of our clients
Goals of WPIS revision:
► Focus on capacity building in countries developing their IP infrastructure, e.g.
national IPOs should be able to deliver IP information services, e.g. state of the art searches, to their private sector
► Efficiency of WPIS, avoid duplication of work, aligning with PCT procedures
Clients of WPISRather than developing countries:
►IPOs of countries developing their IP infrastructure, in particular patent prosecution
• Consequence of TRIPS agreement, becoming a member of WTO; of Free Trade Agreements (FTA)
• Obligations as a PCT member
► IPOs treating PCT national phase entries and national patent applications
► PCT national phase entriesISR: 1st set of search and examination reportIPO: verify amended claims, top-up searches, communication with applicant
► national patent applications
IPO: has to do all
> final responsability for granting and quality
Different categories of IPOs as WPIS clients:
• IPOs just embarking on patent prosecution (e.g. Bahrain, Oman, Bhutan)
• IPOs having established patent prosecution ("emerging Offices"; e.g. Jordan, Malaysia, Viet Nam)
Patent prosecution – different options:
• Doing full substantive examination (search, examination, granting)
• Rely on results of other IPOs (for PCT, other priorities): requires identical claims !
• Outsourcing full patent prosecution (e.g. Singapore)
► WPIS is providing support after decision where to go !
Patent prosecution – different needs:
• Developing expertise in substantive examination, patent prosecution in general
• Support in selected complex technical fields where no (or not yet) experienced examiners are available
• Access to specialised databases not free of charge for efficient, comprehensive searches
• .....
Ideas/options for future WPIS
► Covering the whole patent prosecution (and opposition, invalidation ?), beyond just one set of search and examination report, including as well PCT in the national phase:
• top-up searches of amended claims
• direct exchange, i.e. tutorship between
- an examiner developing expertise and - an examiner having expertise
Ideas/options for future WPIS
► Advantages / benefits of mentorship
- clarification of requests
- asking questions, discussing: efficient search strategy; assessing inventive step; assessing applicant's reply, amended claims (e.g. PCT); formality issues
> Learning by doing, complementing training
- Bulding trust, confidence, mutual understanding
Ideas/options for future WPIS
► For IPOs having experience in substantive examination: Support in selected complex technical fields
► Indirect, mediated access to specialised databases in order to complement searches in free databases
► Inclusion of legal status searches for patent families
Ideas/options for future WPIS
► Support for cooperation; take into account other cooperation initiatives:
Vancouver Group, 9 SA IPOs, ASPEC, AIPN
– avoid duplication of work, e.g. by sharing application information, priority claims
– mutual use/sharing of search and examination results
– using WIPO's platform DAS (Digital Access Service)
Ideas/options for future WPIS
► Training, tutorials for patent prosecution
- cooperation with other programs/offices
- using material developed by other offices
- developing new material
► Establishing a platform for exchange on best practices
Mobilizing /saving resources:
► Investigating needs of countries developing IP infrastructure, options of cooperation
> Ideally user driven
► Investigating options to broaden participation of "donors" • more ICSEI (i.e. written opinions)• mentoring• inclusion of other donors, e.g. all ISAs
Mobilizing /saving resources:
► Investigating funding options
– Discriminate between requesting countries, e.g. LDCs
– Free of charge for whom ?
– Donors: mix of contributions being free of charge and such with financial compensation
– Establishing fund for financing such compensation
National patent applicationNational patent application
Applications with foreign priority / PCT
Applications with foreign priority / PCT
Granted / refused patentGranted / refused patent
Examiner with technical expertise
Examiner with technical expertise
Examiner without technical expertiseExaminer without
technical expertise
Use foreign resultsUse foreign resultsDo own search /complementary
ICSEI
Do own search /complementary
ICSEIICSEIICSEI
Interaction with applicant / Decision on what to grant
Interaction with applicant / Decision on what to grant