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Global Dossier – IP5’s initiative to increase cross-border patent prosecution efficiency

March 22, 2017

Global Dossier – IP5’s initiative to increase cross-border patent prosecution efficiency

March 22, 2017

Back to Fish's Patent Blog

 

The five IP offices (IP5) is the name of a forum of the five largest IP offices in the world – the USPTO (US), the EPO (EP), the JPO (Japan), the KIPO (Korea) and the SIPO (China). Global Dossier is a set of business initiatives developed by the IP5 in an effort to provide, among other things, improved and streamlined patent examination services of patent applications filed in one or more of these offices. The Global Dossier provides a secure, online access to file histories of related patent applications filed with participating patent offices, which include the IP5.

What does the service offer?
A family of patent applications is often filed with US and non-US counterparts. Often, the non-US counterparts are in one or more of the non-US IP5 patent offices and other patent offices, for example, the patent offices in Australia, Canada, Brazil, to name a few. The Global Dossier is a single location in which the file histories of all the applications in the family can be viewed. In other words, if a patent application is publicly available, then the Global Dossier can show, in one screen, the patent offices in which related applications were filed, details about each application (applicant, title, application date, identifying information) and, for those applications filed with the IP5, a dossier that includes the entire prosecution file history similar to the USPTO’s PAIR Information File Wrapper (IFW).

Wait, there’s more
For each non-English document issued by an IP5 office, the Global Dossier automatically generates an English machine translation of the document for free! Assume that the JPO has issued an examination report. Typically, the JP associate will translate the Japanese examination report into English for the US associate. Such translations incur translation fees, which can be in the tens or thousands of dollars depending on the number of non-US filings. The Global Dossier gives the US associate an opportunity to review a machine-translated English version of the examination report and determine if a formal English translation is needed, thereby decreasing translation costs. The free machine-translated English version is also useful to decide whether the Japanese examination report needs to be cited in the US case. This feature can be particularly valuable when the US case has been allowed and issue fee payment is pending.

How can I access/use it?
Global Dossier is extremely easy to use, but note that an initial matter search must be performed under a IP5 member or WIPO case number. If applicable, any non-IP5 family member bibliographic information can be accessed on the search results page. Each dossier allows downloading either a single document or the entire document list. Click here for a video demonstration of Global Dossier.

Prepared with Alycia Morell, Patent Prosecution Training Administrator

Blog Authors

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Sushil Iyer, Ph.D. | Associate

Sushil Iyer is an Associate in the Dallas office of Fish & Richardson.  His practice includes all aspects of patent law focusing on domestic and international patent preparation and prosecution in a broad range of technological areas including mechanical and chemical engineering...

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