Patent Offices and SDOs : Better synergy of the two systems

1. Patent Offices and SDOs : Better synergy of the two systems Dr Michel Goudelis, Director Telecommunications, EPO

2. Introduction 1/2 • Standards more and more linked to patents : • More technology innovation in all aspects of everyday life • Shorter life cycles, accelerated pace of technological development • More competition and higher value of intangible assets • More sophisticated digital technology in Telecommunications, Audio Video and Electronics • Deregulation in Telecommunications increases competition in new systems

3. Introduction 2/2 • The issue of ICT Standards remains an important priority area for the EPO's external relations policy and more and more for other major Patent Offices • Serious achievements and ameliorations have taken place in the last years.

4. Standards, although mostly set by industry, are perceived by broad public to be a kind of public good. In a technically interlinked world, their nature is potentially global. Thus, accessibility and ownership issues gain a lot of momentum and are debated in many different fora. Patents are private monopolies. They can be used to exclude any other from use of the owned technology. Embedded in standards, they offer their owners benefits of a 'double monopoly'. Their territorial nature can be used to co-shape standards in one region and block them in other regions. Conflicting trajectories ? Exclusively owned technologies embodied in potentially global standards such as mobile telephony can produce tensions, if rules of inclusion and use are not clear, both to other technology developers and users (telecom operators).

5. Interface of standards with the patent system • Patents and standards serve certain common objectives insofar as they both encourage or support innovation as well as the diffusion of technology. So long as the patent system motivates companies to contribute their technologies to standardization, and consequently, the best solution is adopted as a standard for a wide use in the market at reasonable cost, the patent system and the standardization process share the objective of promoting innovation and diffusion of technology. However, if patent rights are enforced in a way that may hamper the widest use of standards, some antagonism between the two systems may arise

6. Declaration of essential IPR • Declaration of essential IPR is not always mandatory; often it is not accurate and generally not dynamically updated • More accurate and timely information is necessary in order to make a well informed choice on technologies to be included in standards

7. Challenges for both systems 1/2 • IPR policies of most SDOs are confronted with new challenges; rules and particularly dissemination and confidentiality rules may need clarification and more efficient enforcement • Not all formal SDOs with theoretically open participation processes have in place rules and procedures to make public their pertinent documentation at the earliest stage; and if they do, formats are often not suitable for the patent examination procedure • Such ambiguities expose the inclusion of some pertinent documents (MPEG, ISO, ITU drafts) in search reports to challenges by patent attorneys

8. Challenges for both systems 2/2 • Increased scrutiny "from outside": competition authorities, civil society, courts, but also geopolitical tensions • As standards and cutting-edge, patented technologies are expected to play an increasing role in tackling global challenges, SDOs and Patent Authorities are expected to become more active and coordinate their efforts. Examples are the joint project EPO-UNEP, including new databases for environment-related patents, the IEEE-EPO initiative for a patent landscaping of the smart grids standard 2030, the ITU initiatives about environmental technologies, ETSI's Green Agenda etc.

9. Why use standards in patent examination • Prior art evolving more and more from exclusively patent documents to non patent documents • Standards documents very pertinent in patent examination, in some fields consisting an important part of the relevant citations • Need of "standards proof patents"

10. What do we need from SDOs • 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

11. Achievements 1/3 • Bridging SDOs and POs: Resolutions at Global Standards Collaboration Conferences GSC 12, 13, 14 and 15, 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 Cooperation Agreement between SDOs and Patent Offices ( MoU EPO with ETSI, IEEE and Cooperation Agreement with ITU) formalising and intensifying cooperation.

12. Achievements 2/3 • Interface improvement : 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 has lead to a link of their IPR declaration database to the EPO patent database.

13. Achievements 3/3 • Increased awareness at the Patent Offices • Improvements in the Patent Office infrastructure : • Documentation (standards related documents: acquisition and processing) • Examination: • additional training • systematic links with technical committees of SDOs • Special services for SDOs (landscaping, patent searches)

14. Goals to be achieved 1/2 • Contribute towards transparency:both in technical (up-to-date, informative databases) and structural (clear landscapes and boundaries) regard. • Establish patent related services for Standardisation Organisations such as: patent search services and patent landscaping services. • Cooperation among major Patent Offices (IP5, composed of USPTO, JPO, KIPO, SIPO, EPO) for a common policy, including a common, standards-related documentation database • Proposal from WIPO : in long term include such documentation as PCT minimum requirement.

15. Goals to be achieved 2/2 • Standardisation organisations 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 needs resolution of potential conflicts