CWS48 CWS4 BIS5 Geneva Switzerland 21 24 March 2016 YoungWoo YUN Head Standards Section Content Background Requirements of l egal status data Overview of l egal status TFs activities ID: 500750
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Legal Status Task Force ReportCWS/4/8, CWS/4 BIS/5
Geneva, Switzerland21- 24 March 2016
Young-Woo YUN
Head, Standards SectionSlide2
ContentBackgroundRequirements of legal status dataOverview of l
egal status TF’s activitiesObjectives and scope of new standardRoadmap for new standard developmentComposition of legal status event informationStructure of events listOverall patent prosecution modelOpen issuesLegal status TF 2016 Work Plan2Slide3
BackgroundThe Committee on WIPO Standards (CWS), held in April 2013, agreed to create: Task No.47: “prepare a proposal to establish a new WIPO standard for the exchange of
patent legal status data by industrial property offices. Once this task is completed, the corresponding proposal should be extended to trademarks and industrial designs.” Legal Status Task Force to carry out Task No. 473Slide4
Requirements of legal status datareliable / accurate in timeAccessiblestandardized
comprehensive and understandable4Slide5
Overview of LSTF’s ActivitiesThe Legal Status TF (LSTF) started discussion in December 2013Representatives from 25 Organizations including User Groups participate in the LSTF
Main AchievementsScope of the new standardRoadmapComposition of legal status event informationList of Key events (18 events)Draft list of detailed events (131 events)Draft overall patent prosecution model5Slide6
Objectives and Scope of New Standardthe new standard provide recommendations to promote efficient exchange of patent legal status data by
IPOs to facilitate access to that data by IP information users, other IPOs, IP data providers, the general public and other interested parties. the new standard to specifywhat legal status event data should be exchangedhow that data should be structured.6Slide7
Roadmap for new standard developmentThree Discussion Phases with specific topics:
Phase 1: Objectives and scope of the new standardPhase 2: Legal status data to be exchanged Phase 3: Structure of associated data with the status eventCodification of legal status event data for the data exchangeFinal draft for consideration and adoption at the fifth session of CWS7Slide8
Composition of status event informationStage-Event-State, to indicate the legal status
event information of an application or patent at the given timeSix Stage: Filing, Examination, Pre-grant, Grant, Post-grant, Termination (likely)18 Key Events:Three States:E.g.: Filing-ApplicationFiled-Active8Slide9
18 Key EventsApplication filedApplication discontinuedApplication revived
Examination requestedPre-grant review requestedIP right grantedProtection beyond IP right term grantedIP right ceasedIP right reinstatedIP right review requestedIP right maintained post IP right reviewApplication or IP right permanently terminated9Slide10
18 Key Events (cont.)Document modifiedDocument published
Party data changedLicensing information recordedTime limit extendedFee paid10Slide11
[Category] Application discontinuation [Key events] Application discontinued[Detailed events]
Application withdrawnApplication deemed to be withdrawn, abandoned or lapsed Application refused following examination …Structure of Events List11Slide12
Overall Patent Prosecution Model (draft)
Application filedApplication discontinued
IP right granted
Examination requested
P
re-grant review requested
IP right granted
IP right review requested
Application discontinued
Application revived
E
E
E
E
E
Filing
Grant
Termination (likely)
Examination
Pre-grant
Post-grant
IP right maintained post IP right review
E
(Events):
Document published;
Document modified;
Party data changed;
Licensesing information recorded;
Time limit
extended; or
Fee paid
.
Protection beyond IP right term granted
Application revived
IP right ceased
IP right reinstated
IP right ceased
Applicaion/IP right permanently
terminted
P
re-grant review requested
Application discontinued
Application revived
Active
Inactive/ Terminated
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Open Issueswhether the key events should be mandatory or not;list of detailed events;exchange frequency of legal status data;
set of events to be delivered: 1. Key events only, 2. Key and Detailed events, or 3. Key and Detailed events with IPOs’ actual eventswhether stage transition information (one stage to another) to be provided with events; whether snapshot or history of events to be exchanged;Guidance for IP Offices to implement the new Standard.13Slide14
LSTF 2016 Work Plan (provisional)Finalizing
Phase 2 by June 2016List of draft detailed eventsGuidance for office specific data Mapping IPOs’ actual events to the standard events Starting Phase 3 from JulyCodification of legal status dataDefining minimum data setPreparing a final draft of new standardOrganizing the LSTF meetingsOnline conferencesFace-to-face meetings in 201614Slide15
Questions and DiscussionsThank you for your attention!
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