Keeping track of patent applications filed for similar products in different regions is an important step for multinational companies, serving as a valuable litmus test for infringement risks and commercial avenues. It is also a gruelling logistical challenge. But that could be about to change, thanks to recent work by the Trilateral Offices – a globe-encompassing group of intellectual property (IP) registries comprising the United States Patent and Trademark Office (USPTO), the European Patent Office (EPO) and the Japan Patent Office (JPO).
At their 29th conference, held near Paris in November, the Trilateral Offices unveiled a new online tool – the CCD (Common Citation Document) designed to reduce the workload for applicants by increasing the knowledge base of available data and improving the exchange of information.
Essentially, the CCD collates information about international patent applications, whether approved or rejected, in one place. But rather than focusing on core details of those applications – such as claims – the tool is more concerned with prior-art data: material that could have implications for a patent’s claims to originality. At the Trilateral conference, EPO president Benoît Battistelli called the search facility a ‘milestone’ in cooperation between patent authorities, which would benefit innovators of all types. ‘Based on a proposal made by industry,’ he added, ‘the new tool will provide details about patent applications for the same invention filed at several different offices in parallel. Companies and, in particular, individual inventors stand to benefit from the improved access to information.’
The CCD’s free-to-use database contains a library of more than 117m citations from more than 20 patent offices around the world. This provides users with instant access to a vast array of evidence that registries have used in their decisions on whether to grant patents to the products or services described in applications they have received.
JPO commissioner Yoshiyuki Iwai described the initiative as an exemplar of ‘putting in place the right infrastructure to facilitate work sharing among IP offices’. He also confirmed that the Trilateral Offices expected the CCD ‘to be elaborated and updated further to improve its usefulness’. USPTO director David Kappos, meanwhile, said that by making complex patent information accessible to everyday web users, the three offices had developed ‘a brand-new way of exchanging citation data’.
At present, the CCD database is housed at the EPO. Kevin Douglas, the organisation’s principal director of patent grant automation, says that the CCD will help inventors accurately assess the merits of their own ideas before filing the relevant applications – helping them to save time and money. ‘If you know what your competitors are doing and what the world's patent authorities have found, you are much better placed to file successful patents,’ he said.
Work-share and share alike
The facility is part of a broader effort by patent bodies around the world to democratise patent information and harmonise application procedures – and arrives as a timely answer to prevailing trends. A steady increase in the number of applications over the past 25 years has put an increasing strain on patent offices, and according to WIPO, there were an estimated 5.94 million pending applications for patents worldwide in 2008. This enormous volume has led to a slowdown in the workflow of patent registration, accompanied by industry calls for granting processes to be sped up and simplified.
National patent offices have cooperated in various attempts to make applying for patents simpler – and perhaps the most widespread of these efforts is the Patent Cooperation Treaty (PCT) established by WIPO, enabling inventors to register in all signatory countries with just a single application. In terms of the information made available under this system, WIPO provides access to a comprehensive database of international patent applications filed in a diverse range of countries from Botswana to South Korea, from 1978 to the present day.
However, even with WIPO and the PCT in place, individual patent offices still have the flexibility to draw up work-sharing plans with each other, often in the form of bilateral patent prosecution highways (PPHs), and sometimes in larger, group initiatives. In this context, the Trilateral Cooperation – introduced in 1983 – is the nucleus of a wider arrangement called IP5, which also includes the South Korea Intellectual Property Office (KIPO) and the State Intellectual Property Office (SIPO) of China.
In the run-up to their conference, the Trilateral Offices highlighted another information-access achievement that they have made in 2011: setting down the first steps towards the future automation of data delivery in their JP-First and First-Look Application File Sharing (FLASH) programmes. FLASH aims to display examination results from applications first filed at the USPTO to the other Trilateral partners as soon as possible. Meanwhile, JP-First distributes information from patents first filed in Japan to all signatories of the Paris Convention.
Despite the obstacles presented by patent quality and backlogs, industry can move into 2012 confident of efforts to tackle them from several geographical angles.
To find out more about the Trilateral Offices, click here
For the IP5 website, click here
For the CCD homepage, click here