22 March 2011

Minister Announces Greater Cooperation between Canadian, UK and Australian IP Offices


Picturesque Vancouver
 On Thursday 17 March 2011, Senator Kim Carr – the Australian Minister for Innovation, Industry, Science and Research, announced the launch of a pilot program to be conducted between the Canadian, UK and Australian Patent Offices, to enable examiners in each office to gain electronic access to documents, such as search and examination reports, relating to corresponding patent applications filed with the other two offices.

The supporting IT system, known as Centralised Access to Search and Examination, or CASE (because every good project deserves an acronym), has been developed in partnership with the World Intellectual Property Organisation (WIPO).

Believe it or not, the three cooperating IP offices – collectively calling themselves the ‘Vancouver Group’, for the location of their first formal meeting in 2008 – have dubbed this particular initiative ‘Mutual Exploitation’.

The Canadian Intellectual Property Office (CIPO – another four-letter acronym) is playing host to further details of the activities of the Vancouver Group.  The information provided on ‘the Vancouver Group Mutual Exploitation Initiative’ sets out the following eight principles:

  1. a Vancouver Group Office (VGO) will, where possible, rely on any patent granted by another VGO or on the search and examination performed by another VGO;
  2. a VGO will rely on earlier work by another VGO without the need for applicants to ask them to do so;
  3. the process will be transparent, e.g. applicants will be informed when reliance has been placed on the work of another VGO, where additional work has been conducted this will also be made clear, and feedback will be provided between VGO’s on the need for, and results of, any additional search or examination work;
  4. the process will apply to all work done by a VGO, including work conducted on behalf of another patent office;
  5. once any VGO has found any claim of an application to be allowable, accelerated examination will be available in respect of equivalent applications in the other VGO’s ;
  6. accelerated examination procedures will be simple, efficient, and consistent with existing arrangements (such as Patent Prosecution Highway programs);
  7. procedures will be facilitated by an IT platform built on WIPO infrastructure (i.e. the CASE system); and
  8. VGO’s will support a program of ongoing examiner interaction that ‘enhances mutual understanding, seeks to minimise variability and promotes greater confidence in one another's work.’

We cannot help but note a convenient (i.e. no doubt planned) convergence of events and interests. In particular:

  1. IP Australia’s recent deployment of full-text-searchable patent specifications, and anticipated launch of an online ‘file wrapper’ facility (see previous reports here and here);
  2. the current IP law reform program, which is intended (amongst other outcomes) to bring Australian patent law more closely into line with other major jurisdictions, including Canada and the UK;
  3. the ‘Integrated Patent Examination’ initiative with the IP Office of New Zealand (IPONZ) (reported here); and
  4. the modernisation of New Zealand’s Patents Act, which (‘computer programs’ exclusion aside) will generally bring that country’s laws into greater harmonisation with those of Australia, Canada and the UK.

While IPONZ is not currently a member of the Vancouver Group, it seems inevitable that it will become at least a de facto member, via ‘Integrated Patent Examination’, over the next three years, once the new Patents Act is passed into law.  We would expect, however, that IPONZ will become a fully-fledged VGO, or risk becoming the outsider amongst the ‘English-language’ IP offices of the world.

The real question is whether the USPTO will get on board this initiative, or whether a substantial purpose of the Vancouver Group is to form a ‘bloc’ with sufficient clout to negotiate effectively with the USPTO on matters of cooperation and harmonisations.

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