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Wednesday, 16 March 2011

Vancouver takes up the CASE for shared patsearch and exam results

First they shared the search results, then the examination reports --
then they decided it was time to share the cakes and pies ...
With the United States, Japan and China all preoccupied with other issues, putting the world's patent backlog to rights has been left to that great bastion of law and order, the formerly British Commonwealth -- or at any rate some bits of it.  Now known as the Commonwealth of Nations, this trusty band (click here for full list) is represented in an exciting new initiative by Australia, Canada and the United Kingdom.  The IP Offices of these three, in conjunction with the World Intellectual Property Organization (WIPO), are piloting CASE, or Centralized Access to Search and Examination.  As the UK's Department for Business, Innovation and Skills (BIS) media release explains:
"The IP offices of Australia, Canada and the United Kingdom and [WIPO] have today launched a pilot system to make it easier to access results of search and examination from other offices. The Centralized Access to Search and Examination system (CASE) provides a digital library of search and exam reports which can be shared by participating IP offices. 
The launch of the CASE is a significant advancement towards greater cooperation between IP offices in sharing the results of examination work. This will help reduce the time spent on processing duplicate applications filed in multiple offices. The duplication of work is a contributing factors to the growing patent backlog that is estimated to cost the global economy £7.6 billion for every year of extra delay caused by backlogs. 
CASE is the latest addition to the Vancouver Group Mutual Admiration Exploitation initiative which is aimed at eliminating unnecessary rework and duplication in prosecuting patent applications. 
The Vancouver Group (UK, Australian and Canadian) Intellectual Property offices will be the first to use the CASE system but other offices may join if the pilot is successful. 
UK Minister for Intellectual Property, Baroness Wilcox said [er, pretty well nothing] 
WIPO Director General, Francis Gurry, said [hm, more or less the same] ..."
While the IPKat welcomes this, along with every other initiative that makes the patent examination and grant procedures run more smoothly, he is rather downcast at the fact that even this small, pilot study has not happened till now. Is it a trick of an old Kat's imagination, or is he right to say that the suggestion that patent-examining and granting authorities share each other's examination results has been made regularly since the 1980s and certainly since before the dawn of the internet age?  He offers as a prize a copy of Alain Pottage and Brad Sherman's excellent Figures of Invention: a history of modern patent law (OUP, 2010) to the person who can supply him with the earliest published reference to the examination-sharing proposal.  Submissions by close of play on Sunday 27 March, please, to the IPKat here, with the subject line "Vancouver".

Merpel, who is offering no prizes, wonders whether, assuming decent weather, Australia, Canada and the United Kingdom can between them claim to be the Empire on which the sun never sets ...

Some words that rhyme with Vancouver here, here and here

3 comments:

teemacs said...

The earliest system of a type of examination sharing that I can recall was the system of modified examination in use in Australia. It was in the 1952 Act. I'm not sure whether it was there originally, but certainly it was well established when I started to work in the Australian profession in 1970. Basically, one could use the granted patent of a designated country (in those days, only the UK and the USA) to achieve early grant of an Australian patent. However, one had to make the Australian patent conform exactly to the granted US/UK patent, and that might involve a loss of considerable scope.

Anonymous said...

The CASE initiative is very worthy, but probably of limited value in view of the countries involved.

Of course, it would be sensible for a system like this to be applied much more widely, but the real saving of time and resource would come from a single patent office being able to grant a patent covering, for example, Europe, US, JP, KR etc. However, the enormous divergence of patent laws between the countries seems to be an insurmountable barrier.

I wonder how many highly qualified technical people are needlessly employed in the patent sector as a result of duplicated effort in searching and examining patent applications in several patent offices in parallel, when they could be handled once, if only governments got their act together. Just think of the wonders all of those people could achieve if they were freed up to do something creative.

Anonymous said...

The Minister's comment that "Dealing with the backlog of patent applications is essential in helping companies grow and prosper." should be considered in the light of the contents of the IPO's Steering Board minutes. [ http://www.ipo.gov.uk/about/whatwedo/steer/steer-minutes.htm ]

The minutes of 21 July 2009 para 9 refer to the need to lose 20 examiners to save £1.2m [16 actually went: 20 Oct 2009 para 19], and to £25m that it was proposed to siphon off for BIS initiatives [by 2012: 26 Jan 2010 para 37], while at the same time admitting that a recruitment exercise would be needed in 18 month's time [ i.e. about now]. It subsequently turned out [20 April 2010 para 26] that there was a £7m surplus, despite having paid £600k in overtime to tackle the backlog, but the options of what to do with it did not include implementing the aforementioned recruitment exercise [ 5th July 2010 paras 10, 17]. On the contrary, further staff cuts were envisaged [ para 54 et seq.].

The IPO is an agency which not only gets all its income from its users, and has to pay 4% return on capital to the treasury [5th July 2010 para 20], but now seems to be viewed as a potential cash cow to fund various BIS initiatives such as regional development agencies [ 5 July 2010 para 46] that are not directly concerned with the grant of patents and other IP rights. Users will have their own views as to whether their fees might be better spent on reducing the backlog by strengthening the examining staff, who were unable to cope with the backlog prior to the "voluntary" early redundancies of 2009.

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