As part of the ongoing world-wide effort to improve patent quality, the five major patent offices of the IP51 have a shared vision of improved global cooperation directed toward (a) the elimination of unnecessary duplication of work among the IP5 Offices, (b) the enhancement of patent examination efficiency and quality and (c) guarantee of the stability of patent right.
To that end, since October 2008, IP5 have worked together to harmonise the search and examination environment and to standardise the information-sharing process.
One result of this cooperation is the Global Dossier, developed by the Global Dossier Task Force, a collaboration of the IP5, Industry IP5 Members and WIPO, which has been described as Public PAIR on steroids2. The EPO and SIPO launched the first Global Dossier service on June 5th, 2014. Initially the EPO portal displayed the content of the file wrappers3 of families of patent applications filed in the two offices. Coverage has since been extended to include data from the JPO and KIPO, and now the USPTO.
On November 23rd the USPTO announced that the Global Dossier has now gone "live" at the USPTO. The Global Dossier is now accessible from the USPTO website in the USPTO format, with general information on the Global Dossier here. It includes coverage of all the IP5 offices, as well as patent family data from many other. Benefits and uses of the Global Dossier system include:
(a)Access to all available file history information in the participating offices
(b)Cross-referencing to facilitate efficient tracking of related applications across jurisdictions
(c)Easier and less costly searching for due diligence, technology transfer, litigation and appeal processes
The Global Dossier is expected to reduce costs to applicants, to improve patent quality, and to improve patent certainty, thereby yielding higher-valued patents. It is also intended to simplify international filing procedures. It has many useful features:
Indication of the status of each office and current outages – it is easy to identify records that are not available for service or other reasons
Cross-linked patent family accessibility from any application, publication or patent number from any of the IP5 offices
The system includes enhanced real-time machine translation of patents and file history records so that non-English language documents that would otherwise be problematic may now be readily understood with minimal delay
Patent family lists can be filtered by patent office
Family information from other non-IP5 offices is included
An indication for each application in an IP5 office of the number of office actions issued
There is a direct link to the USPTO Full-Text Database
Users can search, organise, and develop collections of documents of interest
The system is cross-linked to Classification Data
A link is provided to the IP5 Common Citation Document (CCD)
The member patent offices of the IP5, including the USPTO continue to solicit the views and suggestions of users for future improvements. The USPTO encourages users and stakeholders to provide input for future changes to the Global Dossier system.
Current proposals for future developments include:
Access to foreign publications
Enhanced Office Action indicator
Legal Status information
Provision of XML data
A Link to theWIPO CASE4
The availability of the Global Dossier at the USPTO - Global Dossier will provide many benefits to patent professionals, more experienced users of the patent system, who are managing large patent portfolios or who are interested in activities of competitors. It is one of the 'passive' initiatives of the IP5, which allows access to information at a common portal. What promises to offer more significant changes to patent prosecution practice are proposals for more 'active' use of a common portal, such as for cross-filing of patent applications in multiple patent offices, but there is no timeline for implementation. It is expected that, over time, additional patent offices may join the Global Dossier, thereby enhancing its usefulness as a central node or information clearing-house. The Canadian IntellectualProperty Office CIPO has only recently introduced the equivalent of the USPTO PAIR system, providing online access to records of patent applications, but it is not clear to what extent this will be compatible with the Global Dossier project.
The Global Dossier is a significant step toward the easy dissemination of information pertinent to technological advances that lies at the heart of patent law. At the same time, the ease and universality of a shared central database highlights the importance of preparing priority applications with an eye to the many, and sometimes contradictory, requirements of patent applications in different jurisdictions and to the care that may be exercised in making submissions in any of them.
While the Global Dossier currently makes no change to disclosure requirements in the USPTO, these developments may change practice in all the IP5 offices, particularly the submission of amendments and arguments in response to Examiner rejections. The ease of access to file wrappers in all the IP5 offices, including translations of relevant documents, may put even greater importance on ensuring that correspondence stays abreast of examination in other jurisdictions and that actions taken in the various patent offices of a patent family are consistent.
1 United States Patent and Trademark Office (USPTO), European Patent Office (EPO), State Intellectual Property Office of the People's Republic of China (SIPO), Japanese Patent Office (JPO) and the Korean Intellectual Property Office (KIPO)
2 Public PAIR (Patent Application Information Retrieval) enables anyone to have online access to the full 'file wrapper' of a patent application (all correspondence between a patent applicant and an Examiner) and details of patent status, assignments and maintenance fee payments, but only in the USPTO.
3 A "file wrapper", or "file history", is the collection of public correspondence between the patent office and a patent applicant in respect of an application.
4 WIPO CASE is an information sharing system that permits patent offices to share search and examination documentation related to patent applications securely.This facilitates work sharing.It was initially developed by the International Bureau of WIPO in response to a request from the Vancouver Group offices (Australian, Canadian and UK Patent Offices) who are, as yet, outside the Global Dossier system.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.