Improving efficiency of the examination process for patents worldwide

By Steven Gong
April 29, 2016

File cabinet earthIt has been over fifteen years since the release of Private PAIR.  It was one of the most significant technical achievements by the USPTO and one of the major milestones in the patent data revolution by allowing electronic patent filing and data access.

Although a real game changer fifteen years ago, as anyone who tried to get through the latest Java updates to access Private PAIR (especially on a browser other than FireFox) can attest, Private PAIR is far from cutting edge in 2016.

Make no mistake, PAIR is still the bread and butter for US patent practice operations and a valuable source for patent prosecution data.  However, today’s savvy IP Managers are looking for additional tools and data to elevate their IP management.

One of the major reasons why PAIR is no longer the game changer that it once was is the internationalization of patent portfolios.  US patent data is simply no longer enough to provide the complete view of patent portfolios. For many companies, a significant portion of their portfolios are now non-US patent assets.

One indicator of the importance of non-US patent filings is the PCT national phase filings. Based on the latest WIPO data, although US is the single most popular national phase filing destination in 2014, the total number of national phase filings in four popular non-US  patent offices (China, EP, Japan and Korea) is now more than twice the number of US filings (128,946 US filings vs. 267,688 non-US filings).

PCT national phase filings in China, Europe, Japan, Korea and US in 2014

Table and Graph 1: PCT national phase filings in China, Europe, Japan, Korea and US in 2014 from WIPO IP Statistics Data Center

Table and Graph 1: PCT national phase filings in China, Europe, Japan, Korea and US in 2014 from WIPO IP Statistics Data Center

Screen Shot 2016-04-18 at 9.04.40 PM

The top five Patent Offices (IP5) have recognized this internationalization phenomenon and many directives have been introduced to facilitate cooperations between the patent offices.  Perhaps the most significant since the PCT itself is the IP5 Co-operation.

IP5 Logos

In their own words, IP5 is the name given to a forum of the five largest intellectual property offices in the world that was set-up to improve the efficiency of the examination process for patents worldwide. The top five Patent Offices (IP5) have recognized this internationalization phenomenon and many directives have been introduced to facilitate cooperation between the patent offices.  Perhaps the most significant since the PCT itself is the IP5 Co-operation.

The members of IP5 are:

To IP Managers, the most immediate impact of IP5 is the efforts to facilitate greater integration of the global patent system through sharing of patent data.  For example, the IP5’s Common Citation Document (CCD) application now allows access of up-to-date citation data of all five patent offices.

Perhaps even more impactful is the IP5 Global Dossier Service, which integrates prosecution data of EPO, JPO, KIPO, SIPO, and USPTO. For the first time, IP managers can now have a global view of prosecution history and status of five most popular patent offices that accounts for a vast majority of patent filings.

This global view that is now available to IP managers is the true game changer of intellectual asset management in 2016. Successful harnessing of this technology, especially in combination with private PAIR, will provide IP Managers the correct, current and complete view of their patent portfolios, and thereby allowing them to take informed actions and perform meaningful analytics.

The Author

Steven Gong

Steven Gong s a patent attorney who develops innovative products and solutions for IP operations and intellectual asset management. He is a director with MaxVal Group, Inc, and leads the efforts in developing applications including SymphonyIAM, a cloud-based end-to-end IAM application that helps IP managers to streamline the IP management process. Steven has a B.S. in Bioengineering from University of Illinois Urbana-Champaign, a M.S. in Computer Engineering from Santa Clara University and a J.D. from Washington University School of Law.

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Discuss this

There are currently 2 Comments comments.

  1. Night Writer April 29, 2016 7:30 am

    It all comes down to a good prior art search.

  2. Prizzi's Honor April 30, 2016 9:28 am

    An internationalized prior art documentation collection (including published master’s and doctoral theses) going back to the beginning of the 19th century with image and text search as well as with translation capabilities is a good start on improving the IP claiming environment.

    A authoritative time period sliced database for terminology of the art is also needed.

    Automatic specification as well claim assistant/checking/parsing software in the major languages used for patenting would be immensely useful.

    There is also a need to develop metrics to compare prosecution and prosecution transparency as well as competence among the 5 major patent offices.

    There is good evidence that the USPTO is particularly corrupt and incompetent. It would really be good to have means for automatic comparison with other patent offices throughout the world.