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I’ve become more interested in copyright bureaucracies, and patent and trade mark offices: how they operate; how transparent they are; who they are; how powers are divided between them; how they interact; how they characterise their role, their ‘customers’, and their ‘stakeholders’. How we make them accountable for the decisions they make – or how we fail to do so. Regular readers may have noticed this flavour seeping into some of my more recent posts and papers.

Today, my little obsession is the growth of cooperation between Patent Offices around the world. While there’s long been cooperation (Trilateral Cooperation, for example, between the US, Japan and Europe was set up as early as 1983) I’ve been detecting an increase in the number of press releases in this area, and the number of mooted pilots and activities. So, being the obsessive that I am, I thought I’d collect together what’s been going on – at least as published, that I can find – and offer a few thoughts and questions that these developments raise.

A quick scoot around the interwebs indicates a number of particular cooperative ‘projects’ that have seen acceleration in recent times.

Patent Prosecution Highways
Under a patent prosecution highway, if you apply for a patent in Country A and Country B, and Country A’s Patent Office finds at least one claim is patentable, then you can request that Country B’s patent office ‘fast track’ examination of corresponding claims in corresponding applications. Country B’s patent office gets a prosecution history from Country A’s office (thus reducing B’s workload). That history includes copies of any ‘office actions’ (decisions, responses etc) from Country A’s patent office that were part of the patenting process, and any references cited by Country A’s patent office. These PPHs are touted as being ‘win win’: Country B’s Office reduces its workload; patent applicant gets their patent sooner, and Country A suffers no loss (it would have done the work anyway), and hopefully some gain (hopefully, it ends up being a two way street, so that sometimes it is Country B that does the work which Country A then leverages). The patent offices cite them as likely to improve efficiency and quality of patent

Patent Prosecution Highway pilots have started between a number of offices. So far as I can work out from the interweb, there is:

1. A pilot between the US Patent Office (USPTO) and Japanese Patent Office (JPO) that started in July 2006 (USPTO Information; Japanese PTO Information). The initial trial was extended by 6 months; it is due to expire 3 January 2003.
2. A pilot between the JPO and the UK Patent Office that commenced on July 1, 2007 and is slated to continue for 12 months (JPO Press Release, UK Press release);
3. A pilot between the UK and USPTO that commenced in September 2007 and is slated to continue for 12 months (US Press Release, UK Press Release)
4. A pilot between the Japanese Patent Office and the Korean Patent Office, which commenced in April 2007 (JPTO website)
5. A pilot between the Japanese Patent Office and the German Patent Office, which was agreed in October 2007 and will commence in March 2008 (JPTO website here).

If the Japanese Patent Commissioner is to be believed, all these pilots are steps towards ‘the realisation of a global patent prosecution highway network.’ Canada has also been mooted as a possible member of a patent prosecution highway network.

Outsourcing of searches and the like
Another recent development is the idea of outsourcing of patent search and examination work. The USPTO appears to be particularly keen on this kind of thing – no doubt because they have quite a load of international applications (some 47% of their applications come from outside the US). So, you will find in their strategic plan a specific reference to an intention to ‘Outsource Patent Cooperation Treaty (PCT) Chapter I applications freeing examiners to focus on national cases’.

Back in 2002 the USPTO was exploring the idea of outsourcing PCT application work to private contractors; and indeed, in 2005 the USPTO did announce that it has awarded contracts to Landon IP, Inc., and IP Data Miner Inc., to participate in a Patent Cooperation Treaty (PCT) search pilot program, to determine whether searches by commercial entities can maintain the accuracy and quality standards for searches conducted by the USPTO during the patent examination process while remaining cost effective.

They are also using smaller offices. Thus, in 2005, the USPTO announced a pilot program with our own IP Australia for IP Australia to conduct searches on PCT applications. At around the same time, the USPTO announced a similar agreement with the Korean patent office.

The EPO too, while perhaps less advanced along this particular path (and considering it more contentious – members have disagreed whether it should be done in the past), is also making moves in this general direction. Thus in August 2007 the EPO announced an agreement to set up a ‘European Patent Network’, including a ‘utilisation pilot project‘, which ‘will be used to assess the extent to which the results of work done by the national patent offices of the EPO member states during the examination of applications within their priority year can be utilised by both the European Patent Office (EPO) and the applicants’. It seems that, a bit like some of the USPTO projects, this will involve the EPO using initial searches done by the national offices – although at least in the EPO case, the other offices are operating under the same basic set of laws.

Information-Sharing and other activities
There are also some other means for sharing information and increasing cooperation between offices. For example:

1. The Advanced Industrial Property Network provides examination information in the JPO and the results of searches conducted by JPO examiners to IP offices overseas: including Australia, Austria, Brazil, Canada, China, Chinese-Taipei, Denmark, Finland, France, Germany, Greece, Holland, India, Indonesia, Malaysia, Mexico, Norway, the Philippines, Poland, Korea, Romania, Russia, Spain, Sweden, Switzerland, Thailand, United Kingdom, United States, Vietnam, and the European Patent Office (EPO)
2. The Trilaterals have developed various data sharing networks, like TriNet (Trilateral Network) to securely transfer priority data with each other and other patent authorities, the File Wrapper Access (FWA) service, which provides the Offices with secure electronic access to each other’s published files and helps them share work results, and the Priority Document eXchange (PDX) service, which enables each Trilateral Office to exchange priority documents with its partners via secure, electronic connections using the Trilateral Document Access (TDA) Web services;
3. An ‘Asian Trilateral‘ (China, Korea and Japan) has been formed to work towards greater regional cooperation and harmonisation, and ties between China/Korea and the Trilateral Offices have been formed (no doubt out of need, given the language issues involved!).
4. ‘Examiner exchanges’ between various offices have become relatively commonplace (see, eg, between the trilaterals (as reflected in the USPTO plan here); between the EPO and Chinese Patent Office; between the USPTO and Chinese patent office – there are no doubt others)

What does it all mean?
What I’ve collected here is, of course, only part of the picture. It represents the ‘formal’ and publicised cooperation between the offices, and not informal conversations, cooperation, and communication that no doubt occurs at the regular round of conferences and other events in which representatives of all the offices participate (consider, for example, this extract from the EPO 2005 report). I think the development of more and more formal cooperations and projects must be even more influential in drawing standards together.

Of course, ‘cooperation’ in the interests of increasing efficiency and lowering costs is ‘like mother’s milk and apple pie: who can argue against it? (pace Lord Steyn) Just recently, the Gowers Committee in the UK recommended more cooperation: that the UK government should encourage the European Patent Office (EPO) to pursue work sharing with the USPTO and JPO; and that the UK Patent Office should pursue work sharing arrangements with EPC member states, and trilaterally with the USA and Japan to reduce cross-national duplication of effort (which it has done, through the Patent Prosecution Highway).

What is more, there are certain ways in which cooperation is necessary, given loads on patent offices, pendency rates, and language issues. As the eminently sensible Alison Brimelow (new EPO President) recently noted,

‘I don’t see how you can manage a global patent system and the problems of accessing prior art – especially accessing Chinese prior art – without collaborating and without tapping into what has already been done. … We simply cannot pretend, I think, now, that any single office can do this on its own.’

So I’m not arguing against cooperation between offices. That would be silly.

[update: I was chatting with a colleague about this and should add the following: if you think about it, you would have to acknowledge that much of this ‘cooperation’ may not have been ‘invented’ by the Patent Offices in the first instance. I’m sure that patent applicants, even before formal “Patent Prosecution Highways”, were presenting the results of (favourable) examinations in other offices in order to facilitate/speed up the application process. Without better examination, it would be hard to state categorically that this is all about the Patent Offices inventing new means for cooperation – to some extent, it is probably about formalising an informal, and useful, process initiated between applicants and examiners]

It is also notable that the kinds of cooperation we are talking about here so far relates to things like search and the sharing of search results. It does not relate to full outsourcing of examination – just an early stage of that examination. Left at this level, this leaves plenty of room still for individual offices to be giving their own decisions, based on local law. But one interpretation that you could offer of all these developments is that they represent a move towards a more harmonised system – at least in the longer term.

I think there are some interesting questions that arise here:

1. What do projects like this mean for the continued relevance of organisations like WIPO? WIPO has long been under pressure for the fact that a majority of its revenue comes from PCT fees (over 80% of the budget): with only a small proportion of those fees going to the administration of the PCT (see this story from back in 2004; I’ve seen similar mumblings more recently). Will WIPO be bypassed by all this cooperative activity?
2. What does this mean for harmonisation of patent standards? Frances Gurry, from WIPO, has specifically put these developments in the context of legal harmonisation, arguing that things like mutual use by patent offices of each other’s searches has the ‘advantage of actually practically achieving harmonisation’. Given that it is offices which first encounter new legal issues in patent, and make decisions, for example, about patentability, will the increased cooperation mean closer standards on all the new technologies?
3. What room in this increasingly interlinked patent office world is there for individual quirks of law? For example, will countries be able to maintain different rules on what is patentable subject matter? For that matter, what room should there be for different rules?
4. In particular, what room will there, and should there be for smaller patent offices like Australia’s to maintain their own system and legal standards? The EU is big enough and hairy enough to take care of itself, and can maintain its own standards of patentability (and limits, for example, on the patentability of genetically modified organisms and software-oriented inventions). But to the extent that the lead in this increasingly networked world is taken by the bigger offices, what do smaller offices do? (This, of course, takes us back to IP Australia’s strategic vision, as I discussed the other day).
5. Will the eagerness of the United States to outsource its patent examinations – in contrast to the EPO which is not doing so – mean that it will be US standards, not European standards, that are adopted in smaller patent offices – like Australia’s? Given that Australia is already doing some work for the US office, and given too that we have a treaty which requires the offices to work towards more harmonised standards, is our course irrevocably set in a US direction?

If you believe in the accountability of the bureaucracy, and the importance of policy-setting at a national level, it may well be important to get the right kind of cooperation – not just whatever seems easiest. You might want to try to think about ways that local interests and local issues can get a look in. And it may not be that local issues get a look in via ‘traditional’ mechanisms such as maintaining individual national standards. We might have to, for example, look at exceptions to patent law more seriously (cf copyright, where the rights/standards are pretty universal world wide but the exceptions vary pretty significantly, and with some good reason, as authors like Jane Ginsburg have pointed out). Or you look well beyond patent law in working out innovation policy (which, of course, you should do anyway, but it becomes even more important the less the policy levers you have at hand in IP law).

This issue and these developments are highly unlikely to go away. Thoughts and further information, additions etc always more than welcome.

Oh, and look out for some announcements in the near future. There’s a trilateral meeting in early November in Washington.

Update
I’m going to treat this post as something of an aide memoire: adding references, as I find them, to developments in patent office cooperation. Probably of interest to me and no one else. In any event, here goes:

1. 7 November 2007: Bill Heinze has a reference to an Intellectual Property Owners’ Association Report stating that overall patenting costs could be significantly reduced by harmonizing the formal requirements for patent applications in different jusrisdictions. See I/P Updates here; IPO Press Release here. According to the IPO, ‘A coalition including IPO and three other associations is working with the trilateral offices to find ways to eliminate unnecessary costs that result from differences in requirements relating purely to the form of applications.’ According to Heinze, ‘The Trilateral Patent Offices (USPTO, EPO and JPO) have reportedly agreed to consider a working group to consider these five issues, while WIPO has been conspicuously left on the sidelines.’
2. According to IP Watch, on 9 November 2007, the USPTO, JPO and EPO (Trilaterals) will announce a new Memorandum of Understanding on patent applications. Included in the announcement will be (a) a Tri-Way search-sharing initiative. This will involve concurrent search of applications to the same invention in all three trilateral offices at the same time through requests for and the grant of accelerated examination. One office would conduct the initial search of the application and invention, and post the search results and examination determinations on the Trilateral Document Access System for review by other offices and examiners. Supplemental search results and examinations would then be posted on the access system within a certain timeframe; (b) making permanent the Patent Prosecution Highway between the USPTO and JPO; (c) a new governance system for Trilateral cooperation: meaning more use of electronic tools to coordinate cooperation, and less meetings. Very interesting.
3. 16 November 2007: The Trilateral Meeting ended with a Memorandum of Understanding, noted here (and press release here). Among the agreements: making permanent the USPTO-JPO Patent Prosecution Highway; moves towards more work sharing, including ‘comprehensive solutions for reutilizing work results of the other offices to the maximum extent practicable, including the possible implementation of a pilot project to test the feasibility of each office prioritizing the search and examination of applications for which it was the office of first filing’; a common application format which will simplify and streamline application filing requirements in each office to allow applicants to prepare a single application in the common application format for acceptance in each of the three offices; and collaboration among examiners; development of comparative studies; development of search guidelines; exploration of use of common search tools to facilitate common search techniques and resources.