Korean Intellectual Property Office

March 2010March 2010

Tackling the BacklogTackling the Backlog

ContentContent

I. KIPO’s Experience on Tackling the Backlog

II. International Cooperation for Work-Sharing

Ⅰ. KIPO’s Experience on Tackling the Backlog Ⅰ. KIPO’s Experience on Tackling the Backlog

Strong Demand on Reduction of Examination Period(EP)Strong Demand on Reduction of Examination Period(EP)

The results of Survey on EP < 2002>

26% companies experienced economic damages from long EP

80% prefer the EP not longer than 14 months 84% complained about long EP <2004>

74% prefer the EP less than 14 months

75% not satisfied due to long EP

In 2004, the level of satisfaction of EP : 42.2 out of 100

< The Level of Customer’s Satisfaction with EP>Poor Below

AverageAverage Above

AverageOutstandi

ng

13.9% 37.8% 18.4% 25.6% 4.3%

Key Factors on the Reduction of Examination PeriodKey Factors on the Reduction of Examination Period

Recruitment of examiners

Improvement of the examination process

Expanded outsourcing of prior art searches

Recruitment of examiners with advanced technical qualifications (Technical experts and PhDs)

- Total number of patent examiners : (2002) 453 → (2006) 727

Introduction of Six Sigma

Performance-based management

Outsourcing of prior art searches: 30,926 (2002) → 133,000(2006)

Improvement of our automated system of IP administration Increased examination efficiency through development of

the KIPOnet system

0Month/ Year

5

10

15

20

25 22.6

22.1

21.0

17.6

9.8 9.8

12.1

12.2

2002 2003 2004 2005 2006 2008 2007

2009

Reduction of Patent Examination PeriodReduction of Patent Examination Period

Benefits of Reduction of Examination Period(EP)Benefits of Reduction of Examination Period(EP)

Benefits from Reduction of EP based on a survey (2007.9)

1) Advantageous to preoccupy in the market

2) To secure the royalties

3) To prevent counterfeited goods

4) To decrease legal disputes

5) To preclude competitors from imitated goods

6) To encourage inventors

Monetary Gains from the Reduction of EP(2006)

22.1 month (2003) 9.8 month (2006)

Approximately $ 1.4 Bil(USD) of production increase effect

Approximately $ 0.57 Bil(USD) of creation of added value

The Change of Domestic & International Circumstances The Change of Domestic & International Circumstances

Various opinions on EP (2008.6) >> Is the world fastest 9.8 Months enough?

- 53.8% said 9.8 is not fast enough

>> Need to improve the quality of examination?

- 91.4 % said YES!

Change in corporate IP strategy - The focus is on strong, high-quality IPRs rather than the quantity of applications Global collaboration of IP offices - Work-sharing: a way of tackling the examination backlog * Work-sharing: PPH, SHARE, TRIWAY, FOCUS, New Route - Examination quality: a prerequisite for work-sharing

“One Application, One Search, One Examination”

Rapid Increase of PCT International Search Requests

2005 2006 2007 2008 2009

20 735 2,853 11,657 14,474

Change of Policy : Provide 3- Track & High Quality of ExaminationChange of Policy : Provide 3- Track & High Quality of Examination

Quality of Examination Implemented EXCEL Program to improve the quality of examination

Examination Period

Introduce Customer-tailored 3 track system to satisfy various demands

Expand the opportunities for anybody to apply for accelerated examination

Introduce Customer-deferred examination system for those of who do not want their technology to be known to the public early

>>> Maintained 16-Month Examination Period in average

EXCEL (EXCEL (EXEXamination examination exCELCELlence) Planlence) Plan Measures to optimize the examination infrastructure

an emphasis on a vigorous search of nonpatent literature

Improving the automatic machine translation system

Measures to enhance the examination quality

Implementing an individual self-diagnostic system

Establishing new examination divisions for new technologies

Measures to maximize efficiency in the examination qualitymanagement

Systemizing standard operating procedures for searches and examinations

Implementing a Responsible Management System, where directors take full responsibility for the quality of the examination

Customer-tailored Patent Examination SystemCustomer-tailored Patent Examination System

Three-track Examination System

Accelerated Examination: Within 3 months from the date of the request for examination

Customer-deferred Examination: Within 3 months from the date specified by the customer

Customer-tailored patent examination system

AE

CE

RE

- Customers can choose an accelerated track, a regular track or a customer-deferred track.

Accelerated Examination

Regular Examination

Customer-deferredExamination

Ⅱ. International Cooperation for Work-Sharing

Ⅱ. International Cooperation for Work-Sharing

IP 5 Global Work-sharing & CooperationIP 5 Global Work-sharing & Cooperation

Increase of Efficiency and Quality of Patent Examination

Needs of International Consistency of Examination Result

Background

IP5 Cooperation Framework

“Sharing Examination Know-how & Examination Criteria”

Discussion on Work-sharing and Harmonization of

Patent System among EPO, IPO, KIPO, SIPO, USPTO

10 Foundation Project

IP5 Examination Workshop

Patent Prosecution Highway (PPH)Patent Prosecution Highway (PPH)

Apr. 2007

Japan

Jan. 2008

Mar. 2009

Recent StatusDenmark

GermanyFinlandCanadaAustralia

UKRussia

Statistics

USA

Established

Under consideration

2007 2008 2009 (Jan-Jul) Total

KOR→JPN 24 24 17 65

JPN→KOR 81 110 70 261

KOR→USA - 125 104 229

USA→KOR - 70 48 118

1212

Oct. 2009Nov. 2009

Oct. 2009 Jan. 2010

SHARE SHARE (Strategic Handling of Application fro Rapid Examination)(Strategic Handling of Application fro Rapid Examination)

What is SHARE?

Cooperative search & examination system between KIPO & USPTO

Benefits

Increase examination effectiveness & Reduce redundant work

Decrease overall pendency

Improve quality

KIPO – USPTO SHARE Pilot

Initiated September 1, 2009(400 cases)

Selected in narrow technology(Battery, fuel cells etc)

Manual prioritization and notification of work product availability to the offices

Thank you !Thank you ! Thank you !Thank you !

Shin, JinGyun

Chief Administrative Patent Judge

Korean Intellectual Property Office

jin64@kipo.go.kr