News from WIPO

The IPKat is grateful to Epameinondas Stylopoulos, LL. M. of the European Law Students' Association, who writes from Geneva:

The WIPO organized in Geneva from 6 to 7 February, 2007 the first meeting of a Working Group on a Digital Access Service for the Priority Documents. According to various Conventions and Treaties,

“[a]ny person who has duly filed an application… in one of the countries of the (Paris) Union,… shall enjoy, for the purpose of filling in the other countries, a right of priority...” (Article 4a1 of Paris Convention for the Protection of Industrial Property).

To this direction, the Assemblies of the Paris Union for the Protection of Industrial Property, the Patent Law Treaty and the International Patent Cooperation Union (PCT Union), in the context of the 42nd series of meetings of the Assemblies of the Member States of WIPO held in Geneva from 25 September to 3 October 2006, approved the establishment of a digital access service for priority documents.

The IPKat hasn't quite got the hang of e-filing yet

In sum, the new service will offer possibilities for more streamlined handling of priority documents for the benefit of both Patent Offices and applicants, with considerable savings of financial and other resources, similar to possibilities available in the case of priority documents filed in connection with international applications under the Patent Cooperation Treaty (PCT). Participation in the service is expected to be on a voluntary basis for both Patent Offices and applicants. In particular, Offices may have the choice of participating as an Office of first filing or as an Office of second filing, or both.

The service will provide a framework and administrative procedures under which priority documents could be made accessible in a digital library for the purposes of complying with national and regional requirements for the furnishing of priority documents. It will take advantage of the existing automated systems operated by the International Bureau for priority documents under the PCT, with certain additional features necessary in the context of Paris Convention filings and will permit use of a wide variety of media and formats. Offices of first filing will be able to take advantage of the service to reduce the issuing of multiple copies of priority documents. Offices of second filing will be able to reduce the need to handle and store priority documents and to take administrative steps in cases where priority documents have not been furnished by applicants. Applicants will be able to rely, in relation to participating Offices of second filing, on a single reference to a priority document held in a digital library rather than having to obtain and furnish multiple priority documents to all Offices of second filing.

As far as the meeting is concerned, even though it was well-attended, it was actually a small meeting with many observers. The discussion took place mainly between the delegations of the United States Patent and Trademarks Office (USPTO), the Japan Patent Office (JPO) and the European Patent Office (EPO). In particular, the three Offices concerned (“the Trilateral Offices” – http://www.trilateral.net/) hold a substantial majority of the world’s priority documents and had already established a Trilateral-based digital access service called Trilateral Document Access (TDA) to facilitate transfer of priority documents between those Offices. Given the substantial investment by the Trilateral Offices to the TDA service, one of their main concerns was the new international system of digital access to priority documents to be fully consistent with the existing TDA system.

Furthermore, although the draft agenda of the first WIPO Working Group on Digital Priority Documents included the discussion of the system architecture, the organizational structure and the technical and legal considerations, only the system architecture had been discussed and the Working Group agreed to defer more detailed consideration of the two remaining issues to its next session.

In terms of the system architecture, the Working Group agreed that the digital access service for priority documents should be developed having regards to the following principles: the business needs, a network model, flexibility, security, confidentiality, translated documents, efficiency, assistance from the International Bureau to the developing countries, and a free-of-charge policy.

The next session of the Working Group is to be convened from 30 April to 3 May 2007, that is, in the week following the ninth session of the Working Group on the Reform of the PCT.