Sharing Search and Examination Work Products

In carrying out patent search and examination, some patent offices utilize search and examination reports prepared by other offices and patent prosecution information of corresponding foreign applications and patents. Various frameworks, mechanisms and tools have been developed in order to share such search and examination work products.

PCT System

The Patent Cooperation Treaty (PCT) allows patent offices to have a “flying start” in their search and examination work by using international search and preliminary examination reports. Further, once the PCT international applications enter into the national phase, additional search and examination information of certain counterpart applications in the national phase is also available on the PATENTSCOPE website.

WIPO CASE

The WIPO Centralized Access to Search and Examination (WIPO CASE) enables patent offices to securely share search and examination documentation related to patent applications in order to facilitate work sharing programs.

Regional/Plurilateral frameworks

• ASEAN Patent Examination Co-operation Program (ASPEC): A work-sharing program with the purpose of sharing search and examination results between the participating intellectual property offices of the Member States of the Association of Southeast Asian Nations (ASEAN), namely, Brunei Darussalam, Cambodia, Indonesia, Lao PDR, Malaysia, the Philippines, Singapore, Thailand, and Viet Nam.
• PROSUR: A system for technical cooperation among industrial property offices of Argentina, Brazil, Chile, Colombia, Ecuador, Paraguay, Peru, Suriname and Uruguay.
• Vancouver Group:  A collaboration agreement established between the intellectual property offices of Australia, Canada and the United Kingdom, with the aim of sharing information and experiences on common issues and areas relevant to managing a mid-sized national intellectual property office, and contributing to a more effective multilateral approach to work sharing.
• Trilateral cooperation: A number of projects aiming at enhancing worksharing have been carried out by the European Patent Office (EPO), Japan Patent Office (JPO) and United States Patent and Trademark Office (USPTO).
• IP5: A forum of the patent offices of China, Japan, the Republic of Korea and the United States of America as well as the European Patent Office (EPO). IP5’s One Portal Dossier, which is a platform for the secure exchange of patent search and examination documentation between the IP5 Offices, is linked to WIPO CASE.
• Global Dossier
• European Patent Office Utilization Implementation Project (UIP): Confidential sharing of search and examination results of the national patent Offices of Austria, Czech Republic, Denmark, the United Kingdom and Portugal with the EPO through the automated system before the publication of the national applications.
• Electronic Platform for Collaborative Examination (e-PEC): The National Institute of Industrial Property (INPI) in Brazil created an online platform, e-PEC, for collaborative examination between patent offices in order to increase the quality of the examination results. The tool has multiple functionalities: (a) allows examiners to access preliminary (not yet published) search and examination reports produced by their peers for applications from the same patent family; (b) allows the interaction between examiners in charge of the examination of patent applications of the same patent family through electronic messages; (c) allows to record relevant information on patent applications. In the first half of 2018, INPI launched the "Pilot Project for Cooperation between the Patent Offices of Brazil and Uruguay" with the use of the Electronic Platform for Collaborative Examination of Patent Applications (e-PEC).
• The IP Offices of Russia, China and Mongolia have been holding regular annual trilateral seminars on various aspects of intellectual property, including patent examination and other issues covered by patent law. Rospatent provides the access to its patent search system, PatSearch, to other IP Offices. At the moment the Offices of Belarus, Kazakhstan, Kyrgyzstan, Moldova, Tajikistan andthe Eurasian Patent Office have the access to the system.

Bilateral frameworks

• The Strategic Handling of Applications for Rapid Examination (SHARE) pilot program between the KIPO and the USPTO (concluded). Under the SHARE framework, when corresponding applications were filed in two offices, the Office of First Filing (OFF) conducted a search and examination and shared its findings with the Office of Second Filing (OSF), such that the OSF could maximize re-use of the work performed by the OFF and minimize duplication of examination work.
• The United Kingdom Intellectual Property Office (UKIPO) – USPTO Work Sharing Initiative, under which Offices exchange reutilizing each other’s search and examination work products on cross-filed patent applications.
• Since 1993, Rospatent and the German Patent and Trade Mark Office have been quarterly exchanging information searches for matching inventions and/or utility models.
• The IP Office of the Czech Republic signed bilateral agreements on the cooperation with the IP Offices of Croatia, Hungary, Finland, Poland, Austria, Slovakia, and Spain. In these Offices, the patent procedure is accelerated based on the submission of the search report elaborated by the respective contracting Office.
• As to collaborative activities for search and examination of patent applications and the re-use of search and examination results internationally, on November 3, 2020, the Superintendency of Commerce and Industry, as the national office for industrial property registration in Colombia, signed a Reinforced Partnership Agreement with the European Patent Office (EPO). The Agreement is now in its implementation phase. The Ethiopian Intellectual Property Office (EIPO) has signed a reinforced bilateral partnership agreement with the European Patent Office (EPO) which entails the reuse of work products of EPO in the examination of patents at EIPO.

Patent Prosecution Highway (PPH)

• Patent Prosecution Highway (PPH)
  • Bilateral PPH
    • PPH MOTTAINAI
  • Global PPH
• IP5 PPH Pilot Program
• PCT - PPH Pilot

Unilateral use of work products related to foreign applications and grants

Even in the absence of formal or informal agreements between patent offices, many patent examiners use, where appropriate, search and examination reports as well as other useful information issued by other offices in order to facilitate the examination of corresponding national applications. For Example, the Ethiopian IP Office shares the search and examination work products of IP Five (USPTO, EPO, JPO, KIPO & CNIPA). Further, the National Intellectual Property Office Sri Lanka (NIPO) refers to Global dossier information and accepts the search results of IP5 offices when examining PCT applications and non-residential patent applications received through the Paris Convention. Therefore, NIPO encourages applicants to submit amended claims approved by any office of the IP5 offices and thereby patent granting process is expedited.

Also, the use of the results of the search carried out by other offices was the pillar of the Backlog Combat Plan carried out by the Brazilian National Institute of Industrial Property (INPI). As a promising measure to shorten the decision time of patent applications, this strategy was institutionalized by the preliminary examination office action. The favourable results obtained with the Backlog Combat Plan motivated the proposition of Ordinance No. 034, April 1, 2022, which regulates the preliminary examination office action applicable to the applications filed after January 1, 2017 and pending examination.

Some patent offices publish, on the Internet, certain information relating to search and examination of patent applications (for example, legal status, search and examination reports), which may be accessed by examiners of other offices.

• Advance Industrial Property Network (AIPN) by the Japan Patent Office
• K-PION by the Korean Intellectual Property Office
• European Patent Register
• United States Patent Application Information Retrieval system (PAIR)

In some countries, a patent applicant is required to disclose information concerning the applicant’s corresponding foreign application and grant. Depending on the applicable national law, such information shall be furnished by the applicant in all cases, or it shall be submitted upon request of the patent office. For example, the laws of the following countries provide such requirement: Antigua and Barbuda (Section 22 of the Patents Act 2018); Brunei Darussalam (Sections 29 and 30 of the Patents Order 2011); China (Articles 34-36 of the Patent Law as last amended on 27/12/2008); Mexico (Articles 114 and 111 of the Federal Law on the Protection of Industrial Property as entered into force on November 5, 2020); Papua New Guinea (Section 24 of the Patents and Industrial Designs Act 2000 - see also Section 20 of the Patents and Industrial Designs Regulation 2002); Pakistan (Section 20 of the Patent Ordinance 2000), and EPO (Rule 141(1) and Rule 70b of the Implementing Regulations to the European Patent Convention on the Grant of European Patents, last amended on December 15, 2020). Similar provisions in the laws of other countries are found in “Patent-Related Flexibilities in the Multilateral Legal Framework and their Legislative Implementation at the National and Regional Levels – Part II” (document CDIP/7/3 and 3Add);