2010 WIPO General Assembly

(1)

The IP5

2010

WIPO

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2 United States Patent and Trademark Office – www.uspto.gov

IP5 – EPO, JPO, KIPO, SIPO,

USPTO

Brief History of the IP5

Objectives

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Brief History of IP5

Pre 2007

– Between 1985 and 2006, WIPO estimated that

the number of patent applications filed world-wide grew from 884,400 to nearly 1.76 million.

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Brief History of IP5

2007

The IP5 (EPO, JPO, KIPO, SIPO,USPTO)

held their first meeting in Hawaii.

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Brief History of IP5

2008

The deputy heads of the IP5 Offices met in

Alexandria, Virginia

IP5 Vision drafted

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Brief History of IP5

2008

Second Heads of Offices Meeting

held in Jeju, Korea

– Finalized the IP5 Vision

“The elimination of unnecessary duplication of work among the offices, enhancement of patent examination efficiency and quality, and guarantee of the stability of patent right.”

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Brief History of IP5

2008

Second Heads of Offices Meeting

held in Jeju, Korea

– Agreed on 10 Foundation Projects

1. Common Access to Search and Examination Results 2. Common Application Format

(8)

Brief History of IP5

2008

Second Heads of Offices Meeting

held in Jeju, Korea

– Agreed on 10 Foundation Projects 6. Mutual Machine Translation

7. Common Search and Examination Support Tools

8. Common Approach to Sharing and Documenting Search Strategies 9. Common Statistical Parameters for Examination

(9)

Brief History of IP5

2009

Formed Working Groups

– WG1: Common Hybrid Classification

– WG2: IT-Supported Business Processes

Common Documentation, Search and Exam

Tools, Sharing and Documenting Search Strategy, Common Application Format, Mutual Machine Translation, Common Access Tools

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Brief History of IP5

2010

Third Heads of Offices Meeting

held in Guilin, China

– Approved the resources requirements

– Invited acceleration proposals from the Working Groups

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Brief History of IP5

2010

– Continuing implementation of 10 Foundation

Projects

– Preparing for Fourth IP5 Heads of Office

meeting to be held in 2011 in Japan

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IP5 Objectives

1. Reduce search and examination backlog

2. Enable examiners to search all relevant prior art

3. Reduce classification backlog

4. Facilitate applicants to apply for patent

protection within IP5

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IP5 Objectives

6. Promote the utilization of the search and

examination results from other offices

7. Provide easy access to the search strategies

of other offices

8. Establish transparent examination practices

and performance measures

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IP5 Common Hybrid Classification

Niclas Morey, 23 September 2010

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16/8

Common Hybrid Classification Project

Goal:

Make the IPC really usable by all offices

The wish list:

• Level of detail

• Coverage

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How does it work?

• per field, select best existing local scheme (ECLA, FI, USPC best practice of KIPO and SIPO)

• Agreement beforehand

• Move finer subdivisions into IPC

IPC ECLA

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18/8

Progress to date 2009 / 2010

• First version of CHC Operation Procedures (CHC-OPS) – the rules of the CHC game

• 5 Pilot projects started in Nov. 2009 and Feb. 2010 – proceeding according to plan

– sixth pilot project agreed in June 2010

• 3 Pilot projects have already reached IP5 scheme agreement – forwarded to WIPO for implementation in the IPC

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Proposed next steps

To be initiated at next WG1 meeting (11-15 October)

• Evaluation of six pilot projects to facilitate future development of projects

• Investigation of scheme mapping tools

• Development of quality assurance procedures for ensuring consistent classification between offices

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IP5 Common Documentation

Niclas Morey, 23 September 2010

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Common Documentation's Objective

Define a common documentation set representing an extensive technical prior art source for patent and non-patent literature, that will be

accessed and searched by examiners at all IP5 Offices.

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22/34

Common Documentation Content:

Achievements 2009 / 2010 and next steps

• Exchange of detailed resource matrix of patent and non-patent resources completed

• Generic definition agreed

• Proposals made for a detailed content definition, prioritisation

mechanism, and Memorandum of Understanding to support Common Documentation's enforcement

• Agreement expected by end of 2010/beginning 2011 • Common procurement to be explored

The common document dataset for patent and non-patent data shall enable examiners at each IP5 Office to access and search the same resources available to all IP5 partners.

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Authority List

• Advantage: verify completeness (quality) of available IP5 documentation

– kind code

– publication number + publication date – priority number

– classification data

• Detailed proposal to be made and agreed upon by end of 2010 • Enforcement to happen progressively

List of all patent documents issued by a patent office / organisation per type and level of publication (kind code A, B, etc).

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Medialess exchange

• Define standards of document formats (publication numbers, priority numbers)

• Define standardisation on data packaging

• Common quality standards (timeliness, correctness and completeness) • Develop web services for simplified access and exchange mechanisms Medialess data exchange will enable updating of databases searched by IP5 examiners in a standardized and efficient way.

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特許庁

経済産業省

Japan Patent Office

Common Application Format

Progress and next steps

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特許庁

経済産業省

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Common Application Format

Vision

 Acceptance of domestic and PCT applications in

Common Application Format (CAF) to make filing

procedure for multiple countries easier.

 Applications are filed with Offices electronically or

digitized (XML format) by the Office of First Filing

(or Receiving Office) at an early stage

 Procedures following the filing of an application

(i.e., office actions, amendments etc.) are

processed and the applications are published in

XML format at each Office

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特許庁

経済産業省

Common Application Format

Progress to date

• The EPO, JPO and USPTO started acceptance

of CAF in January 2009

• The KIPO started acceptance of CAF in

January 2010

• Exchange of information regarding internal

digitization processes for patent granting

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特許庁

経済産業省

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Common Application Format

Proposed next steps

• Consideration of the legal issues to adapt CAF

agreement.

• Discussion on draft revision of CAF agreement

that includes Korean and Chinese heading.

• Consideration of further XML utilization for

enhancement of electronic processing of

applications.

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特許庁

経済産業省

Common Access to Search and

Examination Results

Progress and next steps

Japan Patent Office

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特許庁

経済産業省

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One Portal Dossier & PDX/DAS

Vision

The One Portal Dossier

• A service that can provide access to all dossier

information of patent family applications

• Each office can develop and use its respective

interface as a platform reflecting its own needs

PDX/DAS

• Provide online Priority Document eXchange (PDX)

• Create a standardized PDX (XML based) file

format for smoother exchange and utilization of

priority documents

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特許庁

経済産業省

EPO App. No. ****** Pub. No. ****** Pat. No. ****** JPO App. No. ****** Pub. No. ****** Pat. No. ****** KIPO App. No. ****** Pub. No. ****** Pat. No. ****** SIPO App. No. ****** Pub. No. ****** Pat. No. ****** USPTO App. No. ****** Pub. No. ****** Pat. No. ******

1. All Documents 2. Application

Documents 3. Office Actions

4. Applicant’s

Response 5. Citation 6. Classification

7. Patent Family (Except for IP5)

Input Application Number

(Priority Number, Application number or Publication Number is available.)

JP2005-008213

OK

One Portal Dossier (Image)

One Portal Dossier

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特許庁

経済産業省

32 EPO App. No. ****** Pub. No. ****** Pat. No. ****** Date Documents 17/Sep/2010 ***** JPO App. No. ****** Pub. No. ****** Pat. No. ****** Date Documents 16/Sep/2010 ***** KIPO App. No. ****** Pub. No. ****** Pat. No. ****** Date Documents **/**/**** ***** SIPO App. No. ****** Pub. No. ****** Pat. No. ****** Date Documents **/**/**** **** USPTO App. No. ****** Pub. No. ****** Pat. No. ****** Date Documents **/**/**** ********* **/**/**** ******** **/**/**** **** EN JP KR EN CN EN

1. All Documents 2. Application

Documents 3. Office Actions

4. Applicant’s

Response 5. Citation 6. Classification

7. Patent Family (Except for IP5)

Examination Report Reason:

1. The following documents (D1/D2), of which D1 is considered to ….

D1= EP-A-0709779

D2= Yasuda et. al, Color Still Picture Sub-Division Coding International Standards, Journal of the Institute of

Image Electronics Engineers of Japan, Japan, December 25,

1989, Vol.18, No.6, P.398-407 2. Lack of novelty, Articles 52(1) and 54 EPC:

The present applications does notcomply with the requirements……

Citation Information

EPO:

1. EP 0709779 A

2. Yasuda et. al,

USPTO: 1. US 2000-325675 A 2. US 2001-292215 A 3. EP 0709779 A WIPO: 1. US 2001-292215 A 2. EP 0709779 A Classification Information ECLA: 1. H01L 21/23D1A 2. G03B 3/00A2B USC: 1. 312/06 2. 215/09 3. 21/234 FI : 1. H01L 21/23, 101@A 2. G03B 3/00@Z IPC: 1. H01L 21/23 Patent family （Except 5 offices） DE 100000 A FR 100000 A

One Portal Dossier (Image)

One Portal Dossier

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特許庁

経済産業省

One Portal Dossier

Progress to date

• Available data to be exchanged through

Phase1 of OPD was identified

Proposed next steps

• Consideration of the specification of Service

Interface for OPD Phase1

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特許庁

経済産業省

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PDX/DAS

Progress to date

• Current status of PDX/DAS usage was

reported

• Consideration of the WIPO DAS as a

desirable avenue for the future PDX

Proposed next steps

• Consider improvement of PDX/DAS

procedure

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Common Training Policy and

Mutual Machine Translation

Jung

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-Common Training Policy

 To build trust among examiners and to provide applicants with reliable, high-quality examination results

 To provide examiners with effective training, especially on any new examination practices introduced as a result of the

implementation of other foundation projects

Project goal

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-Common Training Policy

 Enhancement of mutual understanding between offices through cross-participation in each other’s training courses Progress to date

Office Date Course Participants

JPO Mar 8-11_{(4 days)} Search expert training: _mechanical KIPO (2), EPO (2)

EPO Jun 4 to Jul 6 (6 weeks)

Training for new examiners:

course A KIPO (1), SIPO (2)

JPO Jun 17-22_{(4 days)} Search expert training: _chemical/IT KIPO (4)

USPTO Jul 6 to Aug 2

(4 weeks) Examination overview

KIPO (4), EPO (2), JPO (1), SIPO (3)

Sep 13-16 Search expert training:

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-Common Training Policy

Progress to date

 The IP5 e-learning portal is being utilized so that the content of each office’s training courses can be shared online.

- The existing 22 e-learning courses are being shared (EPO 12, JPO 4, USPTO 6).

- KIPO is preparing an e-learning module on patentability.

- SIPO is working to upload two e-learning modules onto the portal by the end of 2010.

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Common Training Policy

KIPO hosted the first IP5

examiners workshop in 2009.

Search practices are the focus of the second workshop in 2010.

Live Search

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- To collect cross-participants' feedback via surveys for a comparison of the different training approaches

 To monitor the progress of other foundation projects and investigate the necessity of developing training materials that can be used to

implement the changes that result from the achievements of the other foundation projects

 To assess the achievements of the IP5 Examiners Workshop and consider how to utilize the workshop in the future

Proposed next steps

Common Training Policy

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-Mutual Machine Translation

Project goal

 To help users better understand and use the patent gazettes and search and examination information of other offices

 To improve the quality of existing machine translation services at each office

• to conduct joint quality assessment of machine translation services at each office each year

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-Sample Selection and Quality

Assessment

Joint quality assessment

• Section A – 10 • Section B – 10 • Section C – 10 • Section D – 10 • Section E – 10 • Section F – 10 • Section G – 10 • Section H - 10 80 applications cross-filed to IP5 Each office selects 80 cross-filed applications

JPO, KIPO, SIPO extract 800 sentences • Title • 1 abstract sentence • 3 claim sentences • 5 description sentences 10 sentences per application Send extracted sentences to KIPO

KIPO prepares assessment sheets by consolidating samples

Assessment sheets of 2400 machine-translated sentences

Sends assessment sheets to assessors

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Draft Guidelines for Error Review

_{Error review and feedback}

The JPO, KIPO, and SIPO will each extract 400 machine-translated sentences from recently published official gazettes and send them to the EPO and USPTO

MT documents MT documents MT documents

MT documents

400 MT sentences 400 MT sentences 400 MT sentences

Random extraction Random extraction Random extraction

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-Mutual Machine Translation

 A method of MT quality assessment has been established:

-It includes technical fields (sub-classes) to be assessed, amount of sentences, assessment scale, etc.

 Guidelines for the error review feedback process are being discussed:

-KIPO has prepared draft criteria based on input from other offices.

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-Mutual Machine Translation

 To implement MT quality assessment (by 31 Dec 2010): -To assess the quality of existing MT services

-To define the “fit for purpose” quality and analyze the gap between the current quality and “fit for purpose” quality.

 To establish guidelines and a method of reviewing the feedback process:

-To execute a pilot project of the review feedback process (by 31 Dec 2010)

 To implement the error review process (2011). Proposed next steps

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-Thank you!

Comments and questions:

[email protected]

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IP5 Foundation Projects

Common Examination Practice Rules and Quality

Management

State Intellectual Property Office of the People’s Republic of China 23 September 2010

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IP5 Foundation Projects

Common Examination Practice Rules and

Quality Management

State Intellectual Property Office of the People’s Republic of China 23 September 2010

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Summary of the Project

• Developed the common examination practice rules and quality management system within the IP5 offices to enable them understand and utilize one

another’s examination practice rules

• Exercise patent examination at basically same quality level, and build better mutual trust in quality and serve work-sharing

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Progress to date

• Basic items of search rules agreed upon in WG3 in December 2009,Beijing.

• Search practice rules survey conducted in May 2010.

• First version of comparative study report and the model search practice rules drafted.

• Basic items of procedure rules proposed in June 2010 and comments received from EPO,JPO,USPTO, and KIPO in July 2010.

• Quality management survey conducted in June 2010 and responses received from EPO,JPO,USPTO, and KIPO in July 2010.

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Next steps

• Common Examination Practice Rules and Quality Management

Foundation Project to continue with remaining tasks as defined and agreed upon in short-term goals 2010-2011

• Complete detailed planning and resource requirements for 2012-2013

 Conduct comparative study and develop quality review standards and evaluation standards related to substantive examination.

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Common Statistical Parameters for Examination

State Intellectual Property Office of China

September 2010

State Intellectual Property Office of China

September 2010

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Introduction

• Arrangement, definition and computing method of statistical

parameters for examination differ from one office to another

– Difficulties incur when offices make references to relevant parameters

• Inadequacy of statistical parameters for examination with

regard to work-sharing

– Disadvantageous either to common assessment of the actual work-sharing effect, or to providing data information and decision-making

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54 54

Goals

• Coordinate key differences of statistical parameters for examination amongst offices

• Improve parameters for work-sharing

• Establish common statistical parameters for examination

• Comparatively analyze related data on the basis of unified statistics • Raise statistical efficiency and analytical capability

Constraints:

• Different national/regional laws and regulations, examination rules and procedures to be followed by each office be fully respected

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Progress to date

• Approved project mandate

• Agreement on short-term goals, task breakdown, and

resource planning for 2010 - 2011

• Survey of statistical parameters at IP5

• IP5 Parameter Dictionary

– Entry items for version 1 decided – Draft version 1 finished

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Proposed next steps

– Comparative study on parameters

– Preliminary selection and design of CSPE

• Preliminarily define the initial framework and detailed items of the common statistical parameters for examination, applicable to all offices and beneficial to work-sharing

– Pilot project

• Implement the pilot with the specific parameters on the basis of the common statistical parameters for examination preliminarily defined

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Common Approach to Sharing

and Documenting Search

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Overview

• Provide examiners with the ability to document the

approach and strategy associated with the search of

a patent application so that it can be re-used by

examiners in other offices, producing equivalent

results building confidence among the offices to

promote worksharing

• Determine the scope and content of the search

record so that:

– Minimal burden is placed on the first examiner

– Maximum benefit is provided to the second

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2009 Progress

• Mandates approved by the Heads of Office

• Formation of Working Groups to focus on detailed

planning and implementation

• Working level meeting in November to collaborate

with IP5 partners in moving the projects forward

and reaching agreement on:

– 2010-2011 work packages and resource

estimates

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2010 Progress

• Defined the process for conducting current state analysis

and developing IP5 minimum business needs

– Developed templates for each office to complete a

search recordation inventory

– IP5 Offices have completed or are in the process of

completing these templates

• Working level meeting held in June where the following was

accomplished:

– IP5 Offices shared current search recordation practices

– IP5 Offices agreed to participate in a simple pilot as a first

step in determining the scope and content of the search

record

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Next Steps

• Consolidation and prioritization of minimum business

needs using completed search recordation

inventories

• Final design, timeline and launch of initial pilot(s)

• Evaluation tools to support the pilot(s), such as a

survey

• Detailed planning and resource requirements for

2012-13

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United States Patent and Trademark Office – www.uspto.gov

Common Search and

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Overview

• Develop a common set of search tools and functions

that enable examiners to produce equivalent results

for each application that is examined, building

confidence among the offices to promote worksharing

– Maximize the capabilities of existing search

systems

– Provide all examiners with access to the same

robust set of search features and functions

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2009 Progress

• Mandates approved by the Heads of Office

• Formation of Working Groups to focus on detailed

planning and implementation

• Working level meeting in November to collaborate with

IP5 partners in moving the projects forward and

reaching agreement on:

– 2010-2011 work packages and resource estimates

– High-level timeline for developing business needs

and conducting search tools pilots

– Focus of pilots:

• Architecture/system performance issues • Language barriers

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2010 Progress

• Defined the process for conducting current state analysis and developing IP5 minimum business needs

– Developed templates for each office to complete a search tools inventory

– IP5 Offices have completed or are in the process of completing these templates

• USPTO created a video to demonstrate their current search tools (in final stages of development)

• Working level meeting held in June where the following was accomplished:

– IP5 Offices shared proposals for how to demonstrate search tools – The Offices agreed to consider other options to increase

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Next Steps

• Consolidation and prioritization of minimum business

needs using completed search tools inventories

• IP5 Offices to demonstrate search systems

• Final design, timeline and launch of initial pilot(s)

• Evaluation tools to support the pilot(s), such as a

survey

• Detailed planning and resource requirements for

2012-13

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特許庁

経済産業省

Communication Plan

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特許庁

経済産業省

68

Communication plan

Vision

• Sharing information on communication activities

• Side event during the WIPO General Assembly

• Meeting with users

• IP5 Website

Actions

• Communication with internal and external

stakeholders

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Presentation of the IP5 Website

Niclas Morey

Director, IP5/Trilateral Affairs and Int. Org.

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72/34

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