wipo_ectk_sof_01_1_7
wipo_ectk_sof_01_1_7
WIPO/ECTK/SOF/01/1.7
ORIGINAL: English
DATE: May 2001
INTERNATIONAL CONFERENCE ON
INTELLECTUAL PROPERTY, THE INTERNET,
ELECTRONIC COMMERCE AND TRADITIONAL KNOWLEDGE
organized
under the auspices of
His Excellency Mr. Petar Stoyanov, President of the Republic of Bulgaria
by
the World Intellectual Property Organization (WIPO)
in cooperation with
the National Intellectual Property Association of Bulgaria
Boyana Government Residence
Sofia, May 29 to 31, 2001
1
Eli Whitney, United States Patent Number: 72X, Cotton Gin, March 14, 1794.
WIPO/ECTK/SOF/01/1.7
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9. Understanding the historical impacts of the Internet upon intellectual property as a
whole, and being able to anticipate technology, IT, work flow and the future impacts the
Internet may have upon policy, technology, work flow management and intellectual property
value creation is critical if informed, sensible standardization, information technology
management, operations budgets and intellectual asset development and commercialization
are to reach its potential. Without properly managing operations to anticipate and meet the
new metrics brought about by the Internet, one’s seat at the table of intellectual property
prosperity may be lost for generations.
2
Intellectual Property Today : Volume 8, No. 5, May 2001 [www.iptoday.com].
WIPO/ECTK/SOF/01/1.7
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· spawned new industries and technology segments (online IP management tools,
monitoring software, technology exchanges, new patent classifications and
increased business for legal sector, accelerated time to market for new products
and technologies).
3
Using the Internet for non-patent prior art searches Derwent IP Matters, July 2000.
www.ipmatters.net/features/000707_gibbs.html.
4
Manual of Patent Examining Procedure §904.01(c).
WIPO/ECTK/SOF/01/1.7
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· increased costs and accelerated implementation of next-generation patent database
and IT infrastructure (USPTO, EPO, JPO, other gov’t. patent offices). The
unexpected increase in users, combined with the need to automate Web-based
systems have escalated costs and accelerated timetables. Reactive solutions are
proving to be short-lived, and will need to be scrapped when appropriate systems
are developed;
· increase in the amount of lost prior art. Many fledgling companies have filed
software or business method patents, but many businesses have not, or will not
survive the pendency of their applications. Many thousands of otherwise valuable
prior art citations will go abandoned, ultimately being lost. This opens the door
for subsequent, less deserving ‘inventors’ to obtain patents on previously filed
inventions. Correspondingly, the validity of such issued patents can later be
challenged by the earlier inventors who present non-patent citations used in the
original, but abandoned patents;
· increased demands on database and content providers to serve expanding market.
This forces expensive hardware / software infrastructure expansion.
14. What the Internet has NOT done with regard to intellectual property development:
· has failed to live up to a expectations as a technology transfer marketplace;
· has failed to bridge the chasm between industry and intellectual property creators:
has not significantly increased the adoption of IP by companies (has not
streamlined the process of IP commercialization)
5
Dunn and Bradstreet, Domain Stats; [www.emarketer.com, 2000].
6
Reported by Business Wire, 1996.
7
Argus Insights, Durango, Colorado, USA [www.argus.com].
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19. The universe of useful and active intellectual property websites stands at about 35,000,
with about 1,000 being updated monthly or more frequently. A significantly higher number
of sites include references to various intellectual property, digital rights, law, policy or
technology, or data that is of interest to intellectual property practitioners.
20. Suffice to say, the growth of Internet resources and users is growing at an accelerating
rate, and there is no reason to assume that this trend will not continue, especially as emerging
countries become fully Internet enabled. Websites must respond with appropriate content to
serve these rising demands now, and into the future (chart - next page).
21. The challenge of Intellectual Property Information Management continues to drive the
development of search and analysis tools capable of distilling relevant information from the
expanding sea of information and data available on the Internet, although the current state of
the art of searching and analytical tools for the intellectual property community remains quite
primitive.
22. Although there are currently only a handful of suppliers of Web-based IP search and
analysis tools8, software developers continue to make strides in the development of data
management tools however, hopefully at a rate that will allow convergence with the growing
data resources.
23. Increasing the level of quality of patents remains one of the highest goals of patent
offices from every country. Efforts towards Internet-based universal filing, search and prior
art citation access systems continue. But, even with harmonization of 75% of the World’s
8
Patent Search, Analysis & Patent Analytics (including Web-based Software/ASP).
· Aurigin: http://www.aurigin.com/corproot.htm
· Copernic Aggregator: http://www.copernic.com/products/aggregator/index.html
· PatentCafe Café Doors™: http://www.ipsearchengine.com/index.asp?from=&id=01
· Wisdomain: http://www.wisdomain.com/index.htm
WIPO/ECTK/SOF/01/1.7
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patent offices, there will continue to be a substantial amount of relevant prior art data that will
remain unincorporated into any standardized system for quite some time. Therefore,
harmonization efforts will not obviate the requirement for sophisticated tools, policies and
rights of access needed to evaluate the millions of non-patent art citations remaining outside
of any standardized data management system.
24. Increased pendency will also remain a concern to the world intellectual property
community. Patent pendency at the USPTO since 1998 shows a negative trend from
19 months, expanding to 24 months. Given the current policy and budgeting, US “patent
pendency to issue/abandonment will climb to 38.6 months by FY 2006"9 Although Japan is
making strides to reduce its pendency (38 months in 1996, now approaching the 28 month
mark), it continues as one of the longest pendency periods of developed countries.
25. The Internet has so far failed to perform as a tool to facilitate intellectual property
commercialization although there are nearly 75 websites dedicated to promoting technology
transfer10. Of the more than 35,000 technologies estimated to be listed and currently available
for licensing or transfer, the number of completed transactions attributable to the Internet
marginally hit the low hundreds, even after nearly a decade of online promotion. More than
$250,000,000 in venture investment has gone into websites dedicated to technology transfer
and invention commercialization.
26. It is my assertion that within the next few years, the ‘Intellectual Property Internet’ will
evolve into an International Trade Network built upon a global intellectual property backbone,
with an increased emphasis put on trade rather than intellectual property, following the time-
proven axiom that intellectual property protection is only valuable if it is responsive to market
and commercialization opportunities. Intellectual property, and IP protection means are
themselves of little value without first claiming market opportunity or commercial value.
Typically, IP does not create new markets, but remains responsive to them.
27. In response to the growth of Internet use related to intellectual property, costs11 to create
and maintain websites will continue to increase. Major commercial intellectual property
websites have been built at an average cost in the USD$1 million range. With the increasing
demands for depth of content, website high-speed performance, high traffic (bandwidth) and
multi-lingual support, new websites must budget significantly more for the construction and
maintenance of the next generation of intellectual property sites.
28. Government patent and trademark offices have an even more costly and time-
consuming task. That is, not only is there a growing requirement to construct meaningful
information resources for its citizens, it must begin to automate the application filing,
prosecution and publication of patents and trademarks by creating the e-commerce interface
that will serve the growing customer demands.
9
Fiscal Year 2002 Corporate Plan of the Department of Commerce for the United States Patent and
Trademark Office, published in April, 2001.
10
11
Argus Insights, Durango, Colorado, USA [www.argus.com].
Website Creation; Facilitating Invention Development and Commercialization via the Internet, HKPC Nov
2000 [www.CafeZine.com].
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29. More importantly, we are already seeing the negative impact on increased Internet-
related traffic and sophistication and explosive growth of patent applications in various
technology sectors on internal patent and trademark operations. The growth rate of
intellectual property creation and applications filed, coupled with the piecemeal approach to
e-commerce and customer service automation systems has caused a significant overload on
Work Flow Processes within the world patent offices. Increased demands to use the Internet
to search for prior art have out-paced the ability to efficiently and confidently search the
world or prior art.
IP Website Characterization Chart
Type of Website Founding Geographic How Number of Frequency of Targeted User Web Technology,
Charter Reach Financed Web Content Updates Web Server
& Tech
Personnel
Local Non-profit, 200km Dues & Fees 1 to 2 Part- Monthly or less Local inventors Static, Hosted
Organization information Time Server
Regional IP Non-profit, 1000km Dues & Fees 1 to 3 Part- Monthly or less Inventors & Static, Hosted
Organization information Time regional service Server
providers
National Inventor Non-profit, Nationwide Fees & 1+ Full-time, Bi-weekly Inventors, other Static, Hosted or
Organization information Grants plus 1 -3 Part minimum inventor Co-located Server
Time organizations
Commercial For-profit, Web Regional Private - 1 to 2 - Seldom, as Buyers of Static, Hosted or
Product or Service marketing Marketing Occasional / required Provider's Services Co-located Server
Provider Commercial Expense Contract or Products
Item Support
Government Public Service Nationwide, Gov't Budget 5 to 10 Full Monthly, Inventors, Database-driven,
Resource Site some content Allocation Time except Attorneys, Contracted or In-
International databases Businessmen, House Server
Academia
International Non-profit, info, International Dues, Fees & 1+ Full-time, Bi-weekly National Database-driven,
Organization Invention Grants plus 2 -3 Part Organizations, Contracted or In-
commercialization Time Gov't, Trade & House Server
Commerce
Internet IP Portal For-profit, International Privately - more than 10 Daily All Database-driven,
information Hub, Business Co-located or In-
e-Commerce Operations House Server
Copyright © 2001, PatentCafe.com, Inc.
30. The unexpected commercial development of the Internet, combined with the explosive
Internet user base and increasing emphasis on intellectual property protection by industry has
been responsible for the creation of the rough landscape of Internet-based resources.
31. A decade after the first wave, Internet is beginning to mature. We must now take stock
of the opportunities, costs, liabilities and economic benefits of global, Internet-based,
intellectual property and IT systems, and develop a plan to manage them profitably, and
wisely.
32. The chart (above) broadly outlines the variety and types of Internet sites related to
intellectual property. Nearly every IP website falls within one of these classifications.
WIPO/ECTK/SOF/01/1.7
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INTERNET RESOURCES RELATED TO INTELLECTUAL PROPERTY
33. Website categories for IP information, web-based tools and database access:
· Databases:
· Patent Databases (Government & Commercial)
· Trademarks (Government & Commercial)
· Non-Patent Art (Government, Educational & Commercial Research)
· Scientific / Research
· Chemical
· Technology/Materials
· Bio & Life Sciences
· University Thesis & Research Studies
· Technology Disclosure Publications
· Domain Registries: TLDs/ccTLDs (240 ccTLDs, com, net, gov, edu, org)
(f) It’s also important to provide for a staff position that is dedicated to the
harmonization of your patent systems with emerging standards, insofar as it is practical,
possible, and within long range budgets.
35. You’ll note from the chart (above) the relationship between the frequency of website
update and operations costs. Keep these costs in mind when developing your IT strategy, as
too often the incredible costs of maintenance are overlooked in the budgeting process.
36. It is recommended that the majority of budget and effort be put on exclusive content.
Since there are many websites which continually monitor the Internet for IP related resources,
and keep their hypertext links current and active, it is a poor use of budget dollars to develop
one’s own directory of Internet resources. Without frequent updating, this section will
become dated, even out of date, and will likely contain broken links when linked Websites
change their Web address.
WIPO/ECTK/SOF/01/1.7
page 12
[Annex follows]
WIPO/ECTK/SOF/01/1.7
ANNEX
INTERNET TRENDS:
ROLE OF THE INTERNET IN THE DEVELOPMENT, MANAGEMENT
AND COMMERCIALIZATION OF INTELLECTUAL PROPERTY
Andy Gibbs
CEO, PatentCafe.com, Inc.
International Conference On Intellectual Property, The Internet,
Electronic Commerce And Traditional Knowledge
Sofia, Bulgaria
May 29 - May 31, 2001
WIPO/ECTK/SOF/01/1.7
Annex, page 2
• Unplanned Impact on IP
• Created Many Benefits
• Brought New Problems
INTERNET STATE-OF-THE-ART
• 5,000,000 Indexible Pages Added Daily - Growing Faster
Than Online Search Capability
· 35,000 Web Sites With Searchable IP Data Resources
· Maturing Online Tools for Data Mining, Patent Analysis,
and Researching Prior Art
· $1,000,000 (USD) Commercial Web Site Development
· Emerging Web-based IP Management Software
· Digital IP Protection and Infringement Monitoring
Solutions
· Web Sites Use Technology Not Accessible By Users of
Older Computers [Java Script, Flash, Large Graphic Files]
WIPO/ECTK/SOF/01/1.7
Annex, page 7
Blagodaria
Dankeschoen
Dankie
Koszonom
Merc
i
Wado
Thank You