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Project/Service COOPERATION FUND<br />

Status DRAFT<br />

OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET<br />

(TRADE MARKS AND DESIGNS)<br />

COOPERATION FUND PROGRAMME SUPPORT OFFICE<br />

PROJECT BRIEF<br />

CF1.2.10 – Common Examiner’s Support Tool<br />

(CESTO)<br />

Approved by owner NW Nathan Wajsman Director QMD<br />

Authors JC Jaime Cos Codina Business Lead, QMD<br />

ML Melanie Loveday Project Manager, QMD<br />

Contributors JRR Juan Ramón Rubio Director, TMD<br />

RT Richard Thewlis Legal Adviser, TMD<br />

MK Mark Kennedy Examiner, TMD<br />

DE Diego Eguidazu <strong>IT</strong>D<br />

SD Sofie Declercq PSO<br />

SW Simon White Programme Manager<br />

Version 1.1 – 11/10/2010


Cooperation Fund Common Examiner‟s Support Tool<br />

Version Date Author Description<br />

0.1 29/06/2010 JC Initial Draft.<br />

Revision History<br />

0.2 31/08/2010 JC Added the description of the High Level functionalities of the tool<br />

0.3 09/09/2010 JC Added estimation on <strong>planning</strong> & costs for current proposal. Added<br />

alternative, with <strong>planning</strong> & costs<br />

0.4 20.09.2010 JC Modified the document’s structure to present several alternatives and<br />

propose a choice. The <strong>project</strong> plan is adapted to the suggested<br />

alternative and the differences with the other possibilities are highlighted.<br />

Added list of deliverables and further detailed <strong>planning</strong>.<br />

0.5 07.10.2010 JC Adding remarks from Melanie Loveday, Project Manager.<br />

1.0 09.10.2010 ML Results of the Harmonization process between all Cooperation Fund<br />

Project Briefs<br />

1.1 11.10.2010 SW Minor amendments for Gate 2<br />

Clarity of language<br />

Consistency of facts and figures<br />

Presentation<br />

Objectives clearly defined<br />

Expectation of OHIM for POs clearly stated<br />

Quality Criteria (to be used by reviewers)<br />

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Cooperation Fund Common Examiner‟s Support Tool<br />

1. PROJECT DEFIN<strong>IT</strong>ION 5<br />

1.1. Introduction 5<br />

1.1.1. About this document 5<br />

1.1.2. Background: The Examiner‟s Support Tool Prototype of OHIM‟s Lab 5<br />

1.2. The Challenge 6<br />

1.3. Objectives 7<br />

1.4. Expected benefits 7<br />

2. PROJECT PLAN 9<br />

2.1. Project Approach 9<br />

2.1.1. Overall approach 9<br />

2.1.2. Scope and exclusions 11<br />

2.1.3. Constraints 11<br />

2.2. Project team and stakeholders’ organisation 11<br />

2.2.1. Roles and responsibilities 12<br />

2.2.2. Assignments 14<br />

2.2.3. Recruitment 15<br />

2.3. Work description 15<br />

2.3.1. Tasks and activities 15<br />

2.3.2. Major deliverables and acceptance criteria 17<br />

2.4. Project <strong>planning</strong> tools 18<br />

2.5. Project time plan 19<br />

2.6. Project cost estimates 21<br />

2.7. Project tolerances 21<br />

2.8. Risk analysis 21<br />

2.8.1. Risk Types 21<br />

2.8.2. Risk Register 22<br />

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Cooperation Fund Common Examiner‟s Support Tool<br />

2.9. Key dependencies 24<br />

2.10. Project plan and schedule reporting procedure 25<br />

2.11. Quality management 26<br />

2.12. Communications and knowledge management 28<br />

2.13. Closing-out strategy 28<br />

3. ANNEXES 29<br />

3.1. ANNEX 1 - Definitions, acronyms and abbreviations 29<br />

3.2. ANNEX 2 - EST « Lessons Learnt » 30<br />

3.3. ANNEX 3 - Interest shown by the Participating Offices 32<br />

3.4. ANNEX 4 - Profiles for PO Project Team Members 33<br />

3.5. ANNEX 5 - Potential Services and Indicators available via internal data resources 34<br />

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Cooperation Fund Common Examiner‟s Support Tool<br />

1. Project Definition<br />

1.1. Introduction<br />

1.1.1. About this document<br />

This document has been produced to capture a “first cut” view of the scope, investment needed, dependencies on other<br />

<strong>project</strong>s and anticipated payback so that the constituent parts of the <strong>project</strong>, herein referred to as the “Project”, can be<br />

prioritized, funded and authorized. This Project Brief will provide the basis for the Programme Manager of the<br />

Cooperation Fund to present the Project to the Cooperation Fund Management Board to approve and launch the Project.<br />

An overview of the definitions, acronyms and abbreviations used in this Project Brief can be found under Annex 1.<br />

1.1.2. Background: The Examiner‟s Support Tool Prototype of OHIM‟s Lab<br />

The Common Examiner‟s Support Tool (CESTO) is one of the <strong>project</strong>s of the Cooperation Fund. The OHIM Cooperation<br />

Fund (CF) was established in February 2010 to support further harmonization in TMs and designs, modernise national<br />

offices and enhance user-experience Europe-wide.<br />

The CF Management Board received many <strong>project</strong> suggestions from national offices and user associations. These were<br />

carefully examined and used as the basis for establishing a list of 23 <strong>project</strong>s. These <strong>project</strong>s are one-off activities<br />

delivering clear benefits, with concrete outputs and clear start and end dates.<br />

Suggestions were called under four headings or fields:<br />

Harmonization <strong>project</strong>s both including existing <strong>project</strong>s like TMview and new <strong>project</strong>s like Designview, a common<br />

examiner support tool and a common tool for the classification of goods and services;<br />

A suggested list of software packages (e-filing, e-opposition, e-cancellation, e-renewal and e-payment) to support<br />

national offices in providing easier access to trade mark and design protection;<br />

Information services comprising communication and training initiatives to help companies better understand the<br />

Community Trade Mark (CTM) and the Registered Community Design (RCD) systems;<br />

Activities to facilitate the enforcement of trade mark and design rights, helping the work of judges, customs and<br />

other relevant authorities.<br />

This Project falls under Field 1.2, covering the new harmonization <strong>project</strong>s. Following the 18 May 2010, the CF<br />

Management Board issued the following mandate to the Project Manager:<br />

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Cooperation Fund Common Examiner‟s Support Tool<br />

Common Examiner Support Tool<br />

Programme ID: CF1.2.10<br />

Expected start: 2 Q 2011<br />

Timeline 2011 – 2013<br />

Principles Best practice sharing and harmonisation of examination<br />

tools<br />

Description This <strong>project</strong> aims to develop a standardised automated<br />

search tool for examiners in order to improve the quality and<br />

consistency of decisions and reduce examination<br />

timescales.<br />

Table 1 - Project Mandate<br />

OHIM‟s Lab developed a prototype having a very closely related objective to that of the current <strong>project</strong>. This prototype,<br />

codenamed EST for “Examiner‟s Support Tool” was aimed at “defining the elements and functionalities that an automated<br />

„pre examination report‟ should fulfil in order to support the examiner in adopting both Absolute and Relative Grounds<br />

decisions”.<br />

The objective of this prototype was to generate a report to support the examination of the trademark file and the<br />

building of the decision.<br />

The prototype was finished in November 2008 and officially launched for testing on the 12 th February 2009.<br />

Although the prototype was finally not validated, it produced very interesting feedback for the purposes of the current<br />

<strong>project</strong>; it helps understanding the key elements for a CESTO success path: integration with the business workflow,<br />

ownership of the datasources and tight control on the search algorithms, together with the integration with business rules<br />

to adapt to the examination practices of the POs.<br />

For a detailed view of the “lessons learnt” derived from the prototype, check ANNEX 2 - EST « Lessons Learnt »<br />

1.2. The Challenge<br />

In the past both the OHIM and the national offices often lacked transparency and consistency in their examination<br />

decision making procedures. This has led to a situation where the predictability and legal certainty of examinations is not<br />

always guaranteed.<br />

The Cooperation Fund now offers an opportunity to substantially advance and improve upon OHIM‟s initial efforts, in<br />

partnership with other stakeholder, taking into account the lessons learnt from the OHIM prototype. Internal stakeholder<br />

groups of the OHIM such as TMD and LAB have been involved and invited to give suggestions and /or criticisms on a<br />

common similarity tool.<br />

National offices have also been contacted (as explained under Annex 3) and several national offices have shown different<br />

level of interest in this Project. Some discussions have taken place with them in order to ensure their expectations from<br />

this Project are covered as far as possible.<br />

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Cooperation Fund Common Examiner‟s Support Tool<br />

1.3. Objectives<br />

The <strong>project</strong> aims to develop a tool to deliver a standardised and automated report for examiners in order to improve<br />

the quality and consistency of decisions and reduce examination timescales 1 .<br />

Before examiners can build their opinion on the outcome of a decision, they have to carry out a series of checks and<br />

verifications. They have to “build” the case before deciding on whether to file objections or to accept the registration of the<br />

trade mark.<br />

The objective of the Common Examiners Support Tool is supporting the examiner in the process of adopting a decision<br />

regarding a trade mark examination case. This support takes the form of a “Search Report” that is prepared automatically<br />

before the case is presented for examination (see Annex 5 for a list of the information the report could provide). This<br />

search report could also have value for cases where Absolute Grounds need to be re-examined, such as in cancellation<br />

cases or Appeal procedures against examination decisions.<br />

The given <strong>project</strong> objective illustrates that the Common Tool on Similarity of Goods and Services is fully aligned<br />

with the 3 Cooperation Fund goals.<br />

CF goals Project alignment<br />

Modernizing and streamlining National Office systems along<br />

common lines to provide effective and efficient services<br />

Encourage harmonization and use of EU TM systems and<br />

practices across the EU<br />

Assisting the competent authorities in the EU Member States to<br />

better promote and enforce trademark and design rights in their<br />

jurisdictions.<br />

Table 2 - CF Goals Alignment<br />

Very high<br />

Very high<br />

Very high<br />

This alignment is also reflected under the expected benefits of this Project, enlisted under Chapter 1.4.<br />

1.4. Expected benefits<br />

The degree to which each individual Office benefits from the CESTO <strong>project</strong> will be closely related to the kind of<br />

examination workflow of that Office. Overall, the following should be considered:<br />

1. Improvement of Consistency in decision-making. Having a report and “traffic lights” available to warn the<br />

examiner on the existence of similar previous cases to the one being examiner will be a very strong argument in<br />

1 Vision as defined in the list of <strong>project</strong>s of the Cooperation Fund.<br />

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Cooperation Fund Common Examiner‟s Support Tool<br />

favour of consistency. Examiners will be easily aware of the past practice of the Office in order to produce a fully<br />

informed decision (whether to follow or not the past practice).<br />

2. Improvement in Decision-making Quality by the avoidance of “evident errors”. The report is generated<br />

automatically for 100% of the applications in course of examination. Therefore, in principle there is no case that could<br />

escape a potential warning or the identification of a similar case. This ensures that if the warnings and reports are<br />

correctly defined by the PO administrator, the possibility of an evident mistake is close to zero. This is important<br />

because such mistakes, although not frequent, usually have a big impact in the perception of the work of the Office.<br />

3. Harmonization. A key objective of the Cooperation Fund is the harmonization of examination practices and tools in<br />

the European Union. CESTO should bring a common solution based, to the maximum extent possible, on commonly<br />

agreed databases and resources.<br />

4. Improvement of examination time. For those cases where the examiner needs to carry out research before<br />

accepting a trade mark under Absolute Grounds, the report will bring relevant information to his/her attention, thus<br />

saving time. This benefit will is dependent upon the approach to examination applied by the Office. Even where “prescreening”<br />

is adopted, at least 15-20% of all applications will still benefit.<br />

For those POs where the examination of Absolute Grounds requires the consultation of several data sources, the<br />

potential time benefit will be applicable to all applications. The correct realization of this benefit requires that the tool<br />

integrates fluidly in the examination workflow of each Office. The report must be made available to the examiner at<br />

the right point in the procedure in order to be useful. This is a decision for each office to take.<br />

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Cooperation Fund Common Examiner‟s Support Tool<br />

2. Project Plan<br />

The <strong>project</strong> plan establishes the preliminary basis for managing the Project, including the <strong>project</strong> approach, the <strong>project</strong><br />

team and stakeholders, the work description, the deliverables, <strong>planning</strong> (tools), time and cost estimates and tolerances,<br />

the <strong>project</strong> risks and dependencies as well as reporting, quality, communications and close-out management strategies.<br />

2.1. Project Approach<br />

2.1.1. Overall approach<br />

The <strong>project</strong> approach is to provide EU <strong>IP</strong> offices with a common tool to deliver a standardised and automated report for<br />

examiners in order to improve the quality and consistency of decisions and reduce examination timescales.<br />

This tool will have the following main functionalities:<br />

1. User functionalities<br />

The tool generates a report that contains the result of searches launched automatically on the trade mark‟s denomination<br />

and other relevant data.<br />

The automatic searches that will populate the report will be based on the following key elements of the application:<br />

Complete trade mark denomination.<br />

Name or ID of Owner / Opponent<br />

Name or ID of Representatives<br />

Nice Classes covered<br />

Expiry date where recorded<br />

The tool will include some business rules that will determine the degree of expected relevance of the result. In order not to<br />

interfere excessively with the work of the examiner, the tool proposes the use of webservices containing “traffic lights”<br />

information that the POs could integrate in a mini-desktop in their production tool(s).These traffic lights will be lit differently<br />

(green, yellow or red) depending on the relevance of the search results.<br />

The PO administrator will have the opportunity to set the rules for these lights dependent upon local policy and law. As an<br />

example, he/she will be able to define that any identity hit for which Nice classes coincide should lit a red traffic light,<br />

whereas if Nice classes do not coincide, the light should be orange.<br />

The tool will be able to generate traffic light services for each different datasource consulted by the tool. If the examiner<br />

wishes to explore the report as a result of one of these warnings, he/she will be able to do so, calling up the results either<br />

of an individual module or of the whole Report.<br />

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Cooperation Fund Common Examiner‟s Support Tool<br />

2. PO Business Administrator Functionalities<br />

Defining the Report<br />

The main output of the tool is the series of results that make up the Report. This report is built on the individual search<br />

services that the PO administrator decides to implement.<br />

CESTO Examiner’s Dashboard<br />

6ter Paris Convention Office Practice<br />

Geographic Indications<br />

Managing Business Rules<br />

Earlier owner filings<br />

Refusals Database Weak Words<br />

VIEW COMPLETE REPORT<br />

The PO administrator is the person responsible for the decision on<br />

which services have to form part of the report for his Office. This<br />

person should form part of the relevant business area and will not<br />

need to have an <strong>IT</strong> technical background.<br />

The tool will have to provide an interface for each Office to define<br />

its particular web interface report.<br />

The services provided for each particular datasource should be customizable to a certain extent, for example, regarding<br />

the degree of similarity for considering a hit exists.<br />

This customization will be dependant on the information the webservices can provide and, therefore, the customization<br />

possibilities will be only offered once the appropriate webservices are available. The customization areas will be the<br />

following:<br />

Customization of business rules. The service will provide, as a minimum, the ID of the mark, its denomination, the<br />

owner or applicant, its representative and the Nice class or classes. Consequently, the administrator will be offered a<br />

graphic way of building Boolean queries using this information (for an example, see figure).<br />

Customization of traffic lights. Different threshold of results will trigger different colour warnings. Red will indicate<br />

the examiner has to check the report; yellow would indicate there could be relevant results and the examiner should<br />

check the report. Green would indicate that, although results exist, they are likely not very relevant.<br />

The PO business administrator will build such sets of conditions using the available information regarding the owner,<br />

representative and Nice classes. They will be combined using Boolean (AND, OR, NOT) functions to determine green,<br />

yellow and red lights.<br />

Fine-tuning the tool (generation of logs)<br />

The PO administrator will need to be aware of the results produced by the different business conditions he/she has fixed<br />

when configuring the modules.<br />

The tool will not only save the reports generated but will also keep a log on the traffic lights lit for each report. These logs<br />

should be exportable in csv or Excel format in order that the PO administrator can analyze the data of the case.<br />

The Log would ideally contain all the searches and conditions on which the searches were launched and the full data of<br />

the results retrieved.<br />

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Cooperation Fund Common Examiner‟s Support Tool<br />

2.1.2. Scope and exclusions<br />

The tool aims at delivering services the PO may use in different ways. The tool will also include a web interface for the<br />

customization of these services and for the rendering of the results of the search report.<br />

1. The <strong>project</strong> does not intend to cover the integration effort the PO could consider regarding their <strong>IT</strong> tools.<br />

Consequently, all of the following are explicitly out of the scope of this <strong>project</strong>::<br />

Any integration either of the report services or the software package into POs backoffice tools.<br />

The web interface will be made available to the POs under a “standard configuration”. Any modification of the<br />

configuration will be in charge of the PO. The <strong>project</strong> will not deliver personally customized web interfaces.<br />

Any development, modification, upload or other preparatory actions regarding particular databases that a PO<br />

may wish to use within the report the tool generates. The development of the appropriate webservices in order<br />

that these databases could be integrated with the report will fully depend on the initiative and cost of the<br />

Participating Offices.<br />

2. Because of the complexities regarding the databases for the follow up of inter parte decisions, it is initially excluded<br />

that the CESTO report is developed to also support adoption of Relative Grounds decisions.<br />

3. Analysing work processes and / or designing process maps is also excluded from the scope. CESTO will restrict itself<br />

to the provision of web-services. Any business or technical study necessary for the implementation of such services<br />

in the POs back-office will entirely depend on the initiative of that particular Office.<br />

2.1.3. Constraints<br />

The Project will be facing a number of constraints, as detailed below:<br />

Time restrictions: In principle there are no hard time constraints, as there are no legal obligations involved under<br />

the Project.<br />

Resources restrictions: Success of the Project has a direct dependence to the resources that are made available.<br />

In particular the availability of resources within the national offices will be a key to the success of this Project.<br />

2.2. Project team and stakeholders’ organisation<br />

In order to carry out these activities, intensive interaction and coordination with POs is needed to gather different ideas,<br />

approaches, experiences, requirements, constraints and preferences. Besides the intensive participation of POs, the<br />

<strong>project</strong> will also involve the participation of a <strong>project</strong> manager, the PSO and OHIM‟s team of experts and <strong>project</strong><br />

managers and analysts.<br />

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Cooperation Fund Common Examiner‟s Support Tool<br />

POs<br />

CF<br />

Programme<br />

Steering<br />

Group<br />

2.2.1. Roles and responsibilities<br />

Quality<br />

Working<br />

Group<br />

CF<br />

Programme<br />

Manager<br />

OHIM Quality<br />

team<br />

Project<br />

Manager<br />

CF<br />

Programme<br />

Support Office<br />

CF<br />

Programme<br />

Tender<br />

Review<br />

Group<br />

External<br />

contractors<br />

CF<br />

Programme<br />

Risk<br />

Management<br />

Group<br />

Table 3 - Overview Project Team and Stakeholders<br />

CF Benefits<br />

Advisory<br />

Group<br />

CF<br />

Procurement<br />

team<br />

This table summarises the key roles involved in the <strong>project</strong> as well as their main responsibilities:<br />

Roles Responsibilities<br />

OHIM Project Manager (PM)<br />

OHIM Business Lead<br />

The PM is appointed by OHIM.<br />

The PM is authorised to lead the <strong>project</strong> on a day-to-day basis on behalf of the CF<br />

Management Board within the constraints laid down by the Board.<br />

The PM is responsible for the management of the lifecycle of the <strong>project</strong> and the<br />

quality of its products delivered within the specified constraints of time and cost.<br />

The PM plans, monitors and reports on the <strong>project</strong> to the Programme Manager.<br />

The PM produces <strong>project</strong> management documentation.<br />

The PM is responsible for presenting the <strong>project</strong> at the gate review process.<br />

The PM acts as a central point of communication.<br />

The Business Lead is appointed by OHIM.<br />

The Business Lead is responsible for the description of the objectives of the <strong>project</strong><br />

and is in charge of gathering the business feedback from the POs, contributing to the<br />

draft of the <strong>project</strong> specifications.<br />

The Business Lead justifies the case for the <strong>project</strong> and monitors that it remains valid<br />

throughout the <strong>project</strong>. He/she raises the issue before the PM when some of the<br />

expected benefits or functionalities are at stake, updating the <strong>project</strong> documentation if<br />

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Cooperation Fund Common Examiner‟s Support Tool<br />

OHIM CF Programme Support Office<br />

OHIM CF Procurement team<br />

PO Participating Offices<br />

OHIM Technical Lead<br />

OHIM<br />

OHIM<br />

necessary.<br />

The Business Lead participates in the development phase producing input and<br />

clarifications for the development company. He / she also participates in the tests of<br />

any deliverable (prototypes, beta tests, final product) and validates the results of the<br />

testing phase.<br />

The PSO supports the Programme Manager and Project Managers.<br />

It aids those involved in the <strong>project</strong> by provision of technical and administrative<br />

capacity, and quality assurance.<br />

This team will be responsible for all the legal and administrative activities required to<br />

ensure that the selection of the companies that will participate in the Software<br />

Package development. The team will be led by an OHIM representative.<br />

POs will provide one central representative per NO.<br />

The contribution of each PO would be required:<br />

In the initial phase providing documentation or specific input needed for<br />

specification gathering phase.<br />

Throughout the <strong>project</strong> with their feedback,<br />

participation in tests<br />

adoption of the final product.<br />

The role of the technical leads is double: as <strong>project</strong> architects/deputies and as<br />

maintenance managers.<br />

Project Architect. Many of the PMs appointed for CF <strong>project</strong>s will not have<br />

an <strong>IT</strong> background, despite the fact that a vast majority of proposed <strong>project</strong>s<br />

are "<strong>IT</strong>-centric". It is therefore expected that they will request support from<br />

<strong>IT</strong>D in order to have access to expert knowledge in <strong>IT</strong>. It is probably also<br />

fair to expect that at different <strong>project</strong> phases (analysis, design,<br />

implementation, etc.) the PM will want to have a shadow "deputy" in order<br />

to handle details with the <strong>IT</strong> providers.<br />

Maintenance manager. Once a <strong>project</strong> rolls out an <strong>IT</strong> product, corrective<br />

maintenance is expected to take place. Also, adaptive maintenance is likely<br />

to happen. Furthermore, an aspect of knowledge "continuity" must be<br />

ensured in order to remain ready for the future.<br />

<strong>IT</strong> Architecture Board Responsible for the creation of the technical <strong>architecture</strong>/orientation document. Once<br />

submitted to the provider the OHIM DSS expert should provide clarifications where<br />

needed.<br />

Trade Mark Examination Key User<br />

Provide input regarding the needs of the business regarding the searches the tool<br />

can offer in the area of Absolute Grounds examination. Give advice on the solutions<br />

for integration of the tool in the examination workflow. Validate functional<br />

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Cooperation Fund Common Examiner‟s Support Tool<br />

OHIM<br />

specifications.<br />

TM View analyst-advisor TM View will be the most important datasource for this <strong>project</strong>. Consequently, an<br />

expert in the operation and technical solutions used in that <strong>project</strong> should participate<br />

also in the development of CESTO in order to give advice on the usage of TM View<br />

webservices and to easily convey eventual CESTO needs to the TM View Project<br />

Manager.<br />

OHIM SQC Coordinator<br />

The OHIM SQC Coordinator (“Software Quality Control”) is responsible for the<br />

installation in test environment and the SAT<br />

The OHIM SQC Coordinator creates the PRF in order to promote the software<br />

packages once the final UAT is OK.<br />

Table 4 - Roles and responsibilities within OHIM<br />

Apart from the main roles in the <strong>project</strong>, there will also be other parties and stakeholders involved in the <strong>project</strong>:<br />

Roles Responsibilities<br />

CF Programme<br />

Steering Group<br />

CF Programme<br />

Manager<br />

CF Programme Tender<br />

Review Group<br />

CF Programme Risk<br />

Management Group<br />

2.2.2. Assignments<br />

Ensuring that all internal OHIM issues are addressed by the Programme Manager.<br />

The Programme Manager is responsible to the CF Steering Group for the operations of the CF,<br />

overall <strong>planning</strong>, and leading the development and implementation of the <strong>project</strong> portfolio.<br />

Supporting the call for tender team, they will assure that tendering procedures across the CF are<br />

carried out efficiently, consistently and in accordance with best practice.<br />

Established to:<br />

recognise possible risk factors and identify related risks<br />

assess the potential impact of these risks for the programme<br />

select the adequate risk response and implement action plans<br />

monitor the status of the risks and keep stakeholders informed<br />

They will be in close contact with the Project Manager and the PSO in order to identify and register<br />

any new risk that could arise along the duration of the <strong>project</strong>.<br />

Table 5 - Roles and responsibilities within CF<br />

Role Names Commitment<br />

Project Manager Melanie Loveday 30% of her working time.<br />

Business Lead Jaime Cos Codina 30% of his working time.<br />

Programme Support Office Miguel Moro<br />

Carolyne Vande Vorst<br />

5% of their time<br />

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Cooperation Fund Common Examiner‟s Support Tool<br />

Project Team<br />

Role Names Commitment<br />

Trade Mark Examination Key User<br />

SQC Coordinator<br />

Technical Lead<br />

TM View analyst-advisor<br />

2.2.3. Recruitment<br />

Sofie Declercq<br />

Nathan Wajsman<br />

Simon White<br />

Diego Eguidazu<br />

Mark Kennedy<br />

Mark Kennedy, Service 2,<br />

Trade Mark Department, OHIM<br />

Xavier Xhenemont and/or assistant.<br />

To be appointed by <strong>IT</strong>D before Nov 2010<br />

To be appointed before Nov 2010<br />

Table 6 - Overview commitments per profile<br />

5% of their working time<br />

10%<br />

10% of the total SQC effort.<br />

30% of their time<br />

5% of their time<br />

The <strong>project</strong> will require experts from the POs in order to form the working group. The profiles required are staff from<br />

National Office who show an interest in this <strong>project</strong> and have knowledge of examinations proceedings and in particular in<br />

relation to taking decisions on absolute grounds and be proficient in English. A profile of preferred candidates can be<br />

found at Annex 3.<br />

2.3. Work description<br />

Under this chapter the work to be done under the Project is first broken down into high-level tasks and activities, with a<br />

specification of the roles involved and the estimated man days per profile. This is followed by a detailed overview of the<br />

deliverables of the Project, together with their acceptance criteria.<br />

2.3.1. Tasks and activities<br />

The following activities have been identified:<br />

Define a common set of information sources consulted by examiners in support of the examination of a given trade<br />

mark application or opposition. Some of these result from legal requirements (e.g. Article 6ter of the Paris<br />

Convention, Geographical Indications) while others result from the need to determine whether the sign applied for<br />

has a meaning in the market of the goods and services of the application (e.g. specialised encyclopaedias) or<br />

whether it is consistent with the past practice of the Office.<br />

Define and develop services to support a series of searches on the information sources identified. These services will<br />

allow each PO to adapt the results to their needs.<br />

Define and develop a web interface to render the results of these queries; this information will be made available to<br />

examiners as a pre-examination report or via a status dashboard. The dashboard will aim to warn the examiner when<br />

results of interest are obtained. This interface will enable consultation of the detailed report if required. This would<br />

allow a quick check in cases where only a cursory review of the case is necessary before accepting it.<br />

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Define and develop the user administration interface to enable a non <strong>IT</strong> person (the PO administrator) to build the<br />

pre-examination report for his/her Office and define dashboard.<br />

Organize a single “training for trainers” session for the Project‟s key persons in each PO (max 2 persons per Office).<br />

Deliver technical and user documentation for CESTO final product.<br />

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2.3.2. Major deliverables and acceptance criteria<br />

Deliverable Responsible Contributors<br />

List of Datasources and Business Rules<br />

applicable.<br />

Start Finish<br />

Business Lead POs, TMD 10/11/2010 23/02/2011<br />

Define High Level Specifications Business Lead POs, TMD 02/11/2010 04-03.2011<br />

Working Group Validation of Specifications Business Lead POs, TMD 24/02/2011 02/03/2011<br />

Functional Analysis Document Business Lead<br />

POs, External<br />

contractor<br />

07/03/2011 24/06/2011<br />

Review Business Case justification Business Lead POs, TMD 27/06/2011 08/07/2011<br />

Kick Off meeting<br />

Project Manager, Business<br />

Lead<br />

IAERD, <strong>IT</strong>D, TMD, POs 02/02/2011 02/02/2011<br />

Test Approach Document Technical Lead External contractor 15/12/2010 25/01/2011<br />

SQC Acceptance Criteria Technical Lead External contractor 27/06/2011 15/07/2011<br />

SQC Validation of Functional Analysis Technical Lead External contractor 27/06/2011 15/07/2011<br />

Installation of CESTO Prototype Project Manager External contractor 27/10/2011 09/11/2011<br />

Testing CESTO Prototype<br />

Summary Document on Prototype Feedback<br />

CESTO Testing (Iteration 1)<br />

CESTO Testing (Iteration 2)<br />

CESTO Testing (Iteration 3)<br />

Live "beta" testing<br />

Project Manager. Business<br />

lead<br />

Project Manager. Business<br />

lead<br />

Project Manager. Business<br />

lead<br />

Project Manager. Business<br />

lead<br />

Project Manager. Business<br />

lead<br />

Project Manager. Business<br />

lead<br />

POs, TMD 10/11/2011 23/11/2011<br />

POs, TMD 24/11/2011 07/12/2011<br />

POs, TMD 14/03/2012 27/03/2012<br />

POs, TMD 11/04/2012 24/04/2012<br />

POs, TMD 09/05/2012 22/05/2012<br />

POs, TMD 27/06/2012 10/07/2012<br />

Summary Document on Testing Feedback Business Lead POs, TMD 11/07/2012 17/07/2012<br />

CESTO Manual External contractor Business Lead, POs 06/06/2012 03/07/2012<br />

GO LIVE External contractor<br />

Training PO trainers External contractor<br />

Project Manager,<br />

Business Lead<br />

Project Manager,<br />

Business Lead<br />

18/07/2012 18/07/2012<br />

04/07/2012 31/07/2012<br />

CESTO Maintenance Plan External contractor <strong>IT</strong> Lead 18/07/2012 02/08/2012<br />

CESTO Project Lessons Learnt<br />

Project Manager, Business<br />

Lead, Technical Lead<br />

Signature of Project Delivery Project Manager<br />

Table 7 - Overview Deliverables<br />

POs 03/08/2012 27/08/2012<br />

Cooperation Fund<br />

Programme Manager<br />

Estimated Date Range<br />

28/08/2012 28/08/2012<br />

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2.4. Project <strong>planning</strong> tools<br />

MS-Project, MS Excel and Clarity will be used as appropriate.<br />

Also, when necessary and Incident Management Tool will be use in accordance with the provider selected for the<br />

implementation of this Project.<br />

For the purposes of the coordination of the Project Team, bearing in mind that different Participating Offices having seat<br />

though the whole territory of the European Union, a wiki will be created and other collaborative-document sharing<br />

solutions could also be envisaged (e.g. Google Docs, social tools, etc.).<br />

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2.5. Project time plan<br />

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Figure 1 - Project Time Plan<br />

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2.6. Project cost estimates<br />

The overall estimated cost for the CESTO <strong>project</strong> is 1,634,084 € over a period of 18 months, which includes a<br />

10% Management Reserve.<br />

See in Annex the cost overview tables per cost category.<br />

Based on the man days estimated in the deliverables section the following cost categories can be identified:<br />

<strong>IT</strong> Costs amount to 920,000 € (about 56 % of the total budget) of which 393,000 € are budgeted for to be<br />

used for development activities in 2011. These include Software Quality Control and Infrastructure and<br />

Operations Services costs.<br />

Set Up Costs: 315,000 € (about 20 % of the total budget) represent the Web Services integration and Set-up<br />

costs for the POs, based on 9 POs, or 35,000 € per office.<br />

POs resources for CESTO Working Group: the rate considered will be based on their specific actual cost of<br />

employment for the requested profiles. Since at this stage the different figures cannot be determined, an<br />

average estimated rate of 500 €/day has been applied. A total of 420 man days has been planned for the<br />

Working Group totalling 210,000 € for 5 POs or 84 days each.<br />

Meeting expenses: expenses have been calculated in accordance with current OHIM rules in force - Decision<br />

of the President ADM – 09-33 rev 2. Estimated total cost for up to 2 representatives from maximum 5 POs in<br />

the CESTO Working Group totals 27,020 €.<br />

2.7. Project tolerances<br />

The time and cost tolerances for the Cooperation Fund <strong>project</strong>s will be set by the Cooperation Fund Programme Support<br />

Office in collaboration with the Programme Steering Group as soon as the respective <strong>project</strong>s have been approved and<br />

will be the same for all Cooperation Fund Projects.<br />

2.8. Risk analysis<br />

At the moment of drafting this document, the following types of risks have been identified, mostly thanks to the lessons<br />

derived from OHIM prototype “EST”.<br />

2.8.1. Risk Types<br />

The risks identified under this Project can be divided into the following risk types or areas:<br />

User Interaction including speed and compatibility with existing working tools and processes<br />

Technical Risks including connections with internet resources, web-services and any other replacement used.<br />

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Nature of the trade mark sign and the containment of irrelevant results 2 .<br />

Implementation of Business Rules and any risks in terms of possible complications of their implementation within<br />

the system.<br />

Compatibility with the Examination Process<br />

Interdependencies with other <strong>project</strong>s<br />

Resource availability in terms of funding and staffing<br />

2.8.2. Risk Register<br />

Risk Risk Symptoms Area P I P*I Owner Action<br />

Resources not<br />

available for<br />

production<br />

TM View Data<br />

not available<br />

Procurement<br />

<strong>project</strong> (CF2.13)<br />

is delayed<br />

The tool does<br />

not fit with<br />

examination<br />

workflow<br />

Most of the resources<br />

examiners could use in the<br />

internet are not prepared to<br />

respond to systematic<br />

queries.<br />

Missing data from TM View<br />

will preclude the tool either<br />

working for some Offices or<br />

not providing all the<br />

services necessary they<br />

consult specialised web<br />

pages for information.<br />

As a result NOs will have to<br />

change way of working as<br />

soon as tool is available.<br />

The framework contract<br />

resulting from that <strong>project</strong> is<br />

not available as initially<br />

foreseen.<br />

The examination workflow<br />

is quite straightforward in all<br />

Offices and the ratio of<br />

acceptance is high.<br />

Technical H H 9 Project<br />

manager<br />

Technical M H 6 Project<br />

manager<br />

Interdepen<br />

dencies<br />

Compatibili<br />

ty<br />

L M 2 Project<br />

manager<br />

M H 6 Project<br />

manager<br />

Mitigate<br />

If paid resources exist, negotiate<br />

agreement if possible. Reduce<br />

the number of resources used to<br />

those available.<br />

Watch<br />

Closely follow up TM View<br />

Project in relation to<br />

maintenance problems.<br />

Watch<br />

Mitigate<br />

Ensure that search possibilities<br />

are comprehensive enough.<br />

Ensure that there is enough<br />

room for “fine-tuning” the results.<br />

Define a low impact interface.<br />

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Risk Risk Symptoms Area P I P*I Owner Action<br />

Ensure that performance times<br />

are included in Acceptance<br />

Criteria.<br />

Resources do<br />

not offer webservices<br />

Business Rules<br />

impossible to<br />

implement<br />

Excessive noise<br />

in search results<br />

Report difficult<br />

to navigate<br />

External<br />

services<br />

Those resources not<br />

offering web-services<br />

require a tailored way of<br />

accessing and offer no<br />

possibility of tuning either<br />

the query or the result of it.<br />

Business rules could<br />

require that some queries<br />

are done under certain<br />

conditions (degree of<br />

similarity, excluding stop<br />

words, etc.) which could not<br />

be supported by the<br />

CESTO Tool.<br />

Trade mark signs consisting<br />

of several words pose<br />

problems when defining<br />

automatic queries. In some<br />

cases, word by word query<br />

is advisable. In some<br />

others, only a word is<br />

relevant. If the wrong<br />

strategy is chosen, the<br />

report will contain a lot of<br />

noise.<br />

Each trade mark will<br />

produce a different profile of<br />

results. An interface that<br />

does not flexibly adapt to<br />

the nature of the results will<br />

overburden the examiner<br />

with unwelcome<br />

information.<br />

Some of the resources the<br />

examiners check on the<br />

User<br />

interaction<br />

Implement<br />

ation<br />

Nature of<br />

the trade<br />

mark sign<br />

Implement<br />

ation<br />

H M 6 Project<br />

manager<br />

H M 6 Project<br />

Manager<br />

H M 6 Project<br />

Manager<br />

Mitigate<br />

Produce a test gateway to allow<br />

connection to key resources not<br />

providing web-services. Exclude<br />

resources not offering webservices<br />

from the operation of<br />

the tool.<br />

Mitigate<br />

Try to use “internal” resources<br />

providing web-services.<br />

Establish service level<br />

agreements with the owner of<br />

the date source in order to<br />

obtain the necessary technical<br />

conditions or import the<br />

database.<br />

Mitigate<br />

M M 4 Mitigate<br />

Technical M M 4 Project<br />

Manager<br />

Communicate with Search<br />

Project in OHIM‟s Lab to benefit<br />

from solutions proposed in<br />

similar problems. For others,<br />

allow an easy mechanism for<br />

changing search conditions and<br />

re-launching the query.<br />

Include in “Acceptance Criteria”<br />

and in specifications. Test cases<br />

in UATs<br />

Mitigate<br />

Design a tracking system that<br />

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Risk Risk Symptoms Area P I P*I Owner Action<br />

disappear internet simply disappear or<br />

change their operation<br />

principles (e.g.move to<br />

subscription)<br />

Delays and<br />

resource<br />

<strong>planning</strong><br />

If deadlines and gateways<br />

are delayed.<br />

Key experts If key team members /<br />

business or <strong>IT</strong> experts are<br />

not or no longer available<br />

2.9. Key dependencies<br />

Interdepen<br />

dencies<br />

Resource<br />

availability<br />

Table 8 - Project Risk Matrix<br />

M M 4 Project<br />

Manager<br />

M H 6 Project<br />

Manager<br />

can report on such problems<br />

both to the tool administrator<br />

and to the examiner, so that the<br />

tool does not look as<br />

“malfunctioning”.<br />

Watch<br />

Closely monitor dependencies<br />

Watch<br />

The CESTO <strong>project</strong> has dependencies with other <strong>project</strong>s scheduled in-house. These dependencies have been classified<br />

depending on the nature of the dependency (Synergy (S), Overlap (O) or Dependency (D)) and are summarised as<br />

follows:<br />

Project<br />

Project TM View<br />

Project “Search<br />

Image<br />

Functionality” (CF<br />

1.1.1.)<br />

Project<br />

“Harmonised<br />

Quality Standards”<br />

(CF 1.2.5)<br />

Type<br />

D S O<br />

● High<br />

● High<br />

● Low<br />

Impact Description<br />

Retrieving identical or similar trade mark denominations to the<br />

currently examiner one in POs different than the one of the<br />

examiner has a clear interest for the overall harmonization and<br />

consistency of decisions. If a given trade mark has been already<br />

accepted in some POs, this could be a convincing argument to<br />

adopt the same decision (although still different practices and, in<br />

particular, different languages could lead to a different solution).<br />

If these searches are to be integrated in CESTO Report, TM<br />

View should be capable of providing the necessary webservices.<br />

CESTO provides for a series of search possibilities regarding<br />

trade mark denominations. It is also interesting to supplement<br />

these searches with a search image feature. CESTO could<br />

benefit from this <strong>project</strong> provided that it can produce the<br />

corresponding webservices.<br />

CESTO has to define a set of datasources and search conditions<br />

that are related to the quality standards the Participating Offices<br />

need to implement.<br />

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Project<br />

Project TM-XML<br />

standard<br />

extension and<br />

Architecture<br />

Definition (CF<br />

2.13)<br />

Project “Standard<br />

Procurement” (CF<br />

2.13)<br />

Project<br />

“Backoffice for TM<br />

and Designs” (CF<br />

2.19)<br />

OHIM‟s <strong>IP</strong>R LAB<br />

“OSA” Search<br />

algorithm.<br />

Type<br />

D S O<br />

● Medium<br />

● High<br />

● Medium<br />

● High<br />

2.10. Project plan and schedule reporting procedure<br />

Impact Description<br />

The CESTO <strong>project</strong> is based in the use of webservices and the<br />

TM-XML standards. CESTO will have to be aware of the results<br />

produced by this <strong>project</strong> in order to adhere to them or to request<br />

clarifications to its Team.<br />

The development of CESTO software will fall under the<br />

framework development contract established under this <strong>project</strong>.<br />

Therefore, its development is directly dependent on the result of<br />

that Project.<br />

The CESTO Report best integration within the examination<br />

workflow will happen by using its webservices directly from the <strong>IT</strong><br />

production tool.<br />

This integration with the backoffice would happen in two areas:<br />

1.- Desktop traffic lights integrated with the examination <strong>IT</strong> tool to<br />

warn the examiner he/she should check the report.<br />

2. Report details available via the traffic lights or directly by a<br />

“report screen”.<br />

Most of the searches to be done on trade mark denomination<br />

required and advanced search algorithm defined having in mind<br />

the particular nature of trade mark signs (weak parts, complex<br />

expressions, word joining, etc.). These search services are being<br />

developed by the OSA Project of OHIM‟s <strong>IP</strong>R Lab. A remarkable<br />

added valued to CESTO tool would be added if these services<br />

can be used.<br />

Table 9 - Project Dependencies<br />

As set out in the Programme Operating Rules agreed by all internal parties involved in the CF:<br />

The Project Manager will report to the PSO<br />

Project managers create, maintain and update the following minimal documents for their <strong>project</strong>s:<br />

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Project plan and schedule (including breakdown tasks, costs, time and resources). It will include<br />

tracking information (actual and planned) in a visual manner.<br />

A risk register and, if appropriate, the suggested contingency plans.<br />

A stakeholder engagement and communications plan<br />

The documents will be reported upon using a standard template (see Programme Operating Rules)<br />

The documents shall be kept as light as possible but the PM retains the authority to define their content and set the<br />

reporting schedule. Initially a meeting with the PSO will be set up on a fortnightly basis.<br />

Project Managers are responsible for preparing the content for a Gate Review. PSO will support them in the process.<br />

As well as the Project Manager-PSO interactions, the PSO will also hold independent monthly meetings with the Risk<br />

Group, the Tender Review Group and the PSG respectively. In each meeting the PSO will report them on the status of<br />

the <strong>project</strong> and will bring up any topic under their fieldwork that needs either further discussion or their validation.<br />

TASK/RESPONSIBIL<strong>IT</strong>Y MATRIX<br />

Task Recurrence Assigned role Responsibilities<br />

Regular reporting<br />

Monthly;<br />

updates<br />

weekly via<br />

Clarity tool<br />

Project Manager<br />

Monthly reporting to the PSO: <strong>project</strong> plan, risk register<br />

and communications plan<br />

Gate review management Undefined Project Manager Documentation for the Gate Review process<br />

Reporting to Risk Group Monthly PSO Update on the latest status and issues to discuss<br />

Reporting to Tender Review Group Monthly PSO Update on the latest status and issues to discuss<br />

Reporting to Programme Steering Group Monthly Programme Manager Update on the latest status and issues to discuss<br />

2.11. Quality management<br />

Table 10 - Reporting matrix<br />

The quality activities of the development of the software will follow a standard approach by a specialized contractor,<br />

independent of the contractor employed to implement the software. The overall process is illustrated here:<br />

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Performance<br />

Testing<br />

Document<br />

Review<br />

QC Activities<br />

Security<br />

Testing<br />

Test Approach<br />

Code<br />

Review<br />

Regression<br />

Testing<br />

Functional<br />

Testing<br />

Figure 2 - Quality control activities<br />

UAT<br />

Support<br />

The basic test approach is defined at the beginning of the <strong>project</strong> and it consists of the production of a software test<br />

approach, where the specific scope of the software quality control activities will be defined. For the definition of this scope,<br />

stakeholders are consulted and ultimately, the Project Manager will receive a “Test Approach Document” specific for the<br />

<strong>project</strong>.<br />

The following activities will always be present in every <strong>project</strong>, and executed by the specialized contractor:<br />

Document review of the requirements in order to establish acceptance criteria before starting the implementation<br />

phase.<br />

Elaboration of a test plan and test design<br />

Validation of key <strong>project</strong> documents: The purpose of the document verification for an application is early detection of<br />

errors in documentation, in order to increase the quality of the product in the next phases of development.<br />

Check of continuous build and automatic deployment<br />

Static and Dynamic testing<br />

Use of incidents tracking tool<br />

Code review: The aim of the code review is to determine the quality of the software developed, and to compare the<br />

quality between different applications.<br />

Stress and performance analysis: The aim of performance testing is to verify that the applications going to production<br />

operate according to their defined response times, and are able to handle the load they are required to handle.<br />

Security testing: The aim of security testing is to verify that the applications going to production operate according to<br />

its security requirements and to any security standards set for the software.<br />

The following are also needed, but may be carried out by users instead of a specialized team<br />

UAT support: The objective of UAT support is to provide technical and functional support to acceptance testing.<br />

Functional testing: The aim of functional testing is to verify that the applications going to Production operate<br />

according to its functional requirements.<br />

In order to improve the transparency, the specialized software quality control provider will report findings both to the<br />

Project Manager and OHIM‟s Head of Quality Assurance Sector in the <strong>IT</strong> Department.<br />

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2.12. Communications and knowledge management<br />

Apart from using general e-mail official communications, collaborative tools proved to be very successful in past OHIM<br />

<strong>project</strong>s that called for an important coordination effort among multiple POs.<br />

A quick assessment on the available and most widely extended collaborative tools in the market (e.g Google Docs, wiki<br />

software…), gets MediaWiki among the most powerful and appropriate tools for this type of <strong>project</strong>s. MediaWiki‟s<br />

simplicity, web-based operation, user-friendly interface and free-of-charge approach, allows participants in different<br />

locations to easily exchange ideas in an organised and efficient way.<br />

To sum up, two different types of tools will be used during the <strong>project</strong>:<br />

E-mail: it will be used in initial communications during the <strong>project</strong> (e.g invitations sent to PO‟s during the<br />

establishment of the <strong>architecture</strong> group, asking PO‟s for resources…), in formal communications to keep all the<br />

PO‟s updated (even if they do not actively participate as members of the work group), and in reporting to the<br />

Cooperation Fund PSO.<br />

MediaWiki: once the <strong>project</strong> has been launched, all the participants involved in the <strong>project</strong> should, as far as<br />

possible, keep all the communications and documentation inside the wiki. This will help to maintain all the<br />

information related to the <strong>project</strong> stored in a unique and central repository and fully accessible by every participant<br />

in the <strong>project</strong><br />

A communication plan and knowledge management plan will be developed when the <strong>project</strong> starts.<br />

2.13. Closing-out strategy<br />

As the main product of this <strong>project</strong> is expected to have a beneficial impact well into the medium term, provision - including<br />

appropriate funding - will need to be made within OHIM for its absorption and transfer into the business as usual<br />

environment.<br />

The cost of the maintenance of the CESTO tool as foreseen in the <strong>IT</strong> Architecture alternative finally chosen will be that<br />

approximately of maintaining two running servers, around 30.000€ per year.<br />

Once the main deliverables have been completed, all relevant payments made, and the sustainability requirements<br />

identified, the Project Manager will present the <strong>project</strong>‟s results to the Management Board, which will identify main<br />

lessons learned at the programme level, direct the Programme Manager accordingly and close out the <strong>project</strong>.<br />

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3. Annexes<br />

3.1. ANNEX 1 - Definitions, acronyms and abbreviations<br />

Acronym Description<br />

CESTO Common Examiner's Support Tool<br />

CF Cooperation Fund<br />

EU European Union<br />

NO National Office<br />

PM Project Manager<br />

PO Participating Offices<br />

PSG Programme Steering Group<br />

PSO CF Programme Support Office<br />

WG Working Group<br />

Table 11 - Overview of definitions, acronyms and abbreviations used in this Project Brief<br />

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3.2. ANNEX 2 - EST « Lessons Learnt »<br />

LESSONS LEARNT FROM THE <strong>IP</strong>R LAB PROTOTYPE<br />

“EXAMINER’S SUPPORT TOOL (EST)”<br />

A Key User prepared a report on the testing experience. Its conclusions revolve around the idea that it does not fit well in<br />

most of the current OHIM examination workflows. The main conclusions of the report are:<br />

The tool is well conceived and structured, retrieving thorough and complete information.<br />

In the current workflow in TMD, the tool would bring added value in cases where a comprehensive research<br />

is necessary, thus excluding those cases where the examination task is reduced to a cursory search to<br />

confirm the mark‟s acceptability (estimated to 85%). For these Participating Offices where the examiner‟s<br />

task includes checking several datasources in all cases, the tool couold bring time, consistency and<br />

completeness benefits.<br />

The tool could be also fit as a support mechanism for Legal Advisors.<br />

Some resources, even key resources, are not designed for the purpose of automatic queries. That is, they<br />

do not offer webservices. They are rather designed exclusively for human navigation; the „query‟ field is<br />

usually “hidden” behind several pages of navigation. Under these circumstances, the automation requires a<br />

lot of tailor-made effort that can be lost the moment the consulted page changes its layout even slightly.<br />

Having recourse to resources that are external to the organization usually implies that there is no possibility<br />

for customizing the conditions on which a search is run. As an evident example, if the search engine behind<br />

the resource is tuned to produce a result based on a certain degree of similarity, we can not request that a<br />

search on identity or in a more stringent degree of similarity is made.<br />

Running automated queries for each and all the applications the POs treat will notably stress the target<br />

resources. OHIM alone would be launching around 350 queries per day, 1.750 per week, around 80.000 per<br />

year. This means that, for all information resources that are „external‟ to the organizations, a Service Level<br />

Agreement should be reached to avoid the service being blocked due to an excessive number of queries<br />

(confused with DoS attacks).<br />

OHIM‟s prototype produces a remarkable amount of information (in total, it queries more than 100<br />

resources). The user has to navigate through different sections and sometimes the experience is a bit<br />

burdensome. Ideally, the interface should take the form of a mere “traffic light” or gauge indicator the<br />

examiner will check only when in “red area”. In order to implement this approach, a very tight control of the<br />

conditions of the query and a very clear definition of the business rules will be necessary. For example, in<br />

cases of trade marks applied for class 5, a close similarity or identity hit in the International Nonpropietary<br />

Names for pharmaceutical substances should trigger a “red light”. This case requires that an identity search<br />

can be made on this database and that any result that is not an identity hit is ignored.<br />

The prototype includes a module for maintaining the specifications of each of the resources used (with<br />

parameters such as URL, user, password, etc). The very dynamical nature of the resources queried<br />

recommended the development of a module for their administration. The objective of this module is to allow<br />

the management and contribution of new resources directly by the relevant key users (no need of<br />

development knowledge).<br />

In the current prototype the way of generating an EST Report is by calling the resources (external and<br />

internal) in sequential order, in other words, the time to generate an EST Report is very related to the sum of<br />

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Cooperation Fund Common Examiner‟s Support Tool<br />

all the times taken for every request to the internet. For a new version of EST, it is recommended doing the<br />

requests of the resources following a parallel approach and then aggregates the results. This would<br />

probably reduce the time to generate an EST Report to 10%.<br />

It has been found very advisable that a new version of EST should have an automatic process that would<br />

test periodically all the services in order to constantly know their availability and reliability. The process<br />

would report to the administrators of the tool in case some resource is not working properly.<br />

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Cooperation Fund Common Examiner‟s Support Tool<br />

3.3. ANNEX 3 - Interest shown by the Participating Offices<br />

Various Offices have shown different degrees of interest in the <strong>project</strong>. The table below identifies which are inclined to<br />

participate in the <strong>project</strong> and summarizes the feedback provided so far.<br />

CODE Degree of Participation Summary Interest Declared Contact person<br />

BG<br />

DE<br />

DK<br />

ES<br />

FI<br />

Cooperation Fund (CF) Field 1 is priority for this<br />

Office (in particular 1.1).<br />

Interest in this <strong>project</strong> and explicitly confirmed<br />

their participation in the specification of this<br />

<strong>project</strong>.<br />

Interested to participate but not a priority<br />

<strong>project</strong>.<br />

Cannot assess whether Priority - Project needs to<br />

be further defined to assess degree of<br />

involvement.<br />

Interested, in principle. More information on the<br />

<strong>project</strong> is needed.<br />

Provided feedback on examination workflow; examiners check<br />

both AG & RG. Support the idea of modularity of the services.<br />

Can not assess particular benefits at this stage.<br />

Provided feedback on examination workflow; examiners do a<br />

thorough examination for each file. Considers the lessons<br />

learnt from the prototype very relevant; avoiding them is key<br />

for the success of the <strong>project</strong>. Considers the benefits of the<br />

<strong>project</strong> focuses on Quality but not on saving examination<br />

time.<br />

Provided feedback on examination workflow; examiners do a<br />

thorough examination for each file. Consider the automatic<br />

running of the report will not bring valuable information.<br />

Traffic lights approach is considered too simplistic. The<br />

approach to examination is focused on examiner-based search<br />

and use of precedents.<br />

Provided feedback on examination workflow; examiners do a<br />

thorough examination for each file. Consider an automated<br />

series of checks useful to support the examiner and agrees on<br />

the value of a "traffic light" warning system. Consider that the<br />

<strong>project</strong> could bring both time and quality benefits to their<br />

examination workflow.<br />

FR 2nd Priority Project in CF Field 1.2 <br />

IE<br />

Interested in participating in CF Field 1. No<br />

further precison has been made. .<br />

Lidia Nikolova.<br />

Tel: +359 2 970 14 26<br />

Email: lnikolova@bpo.bg<br />

Petra Weitzel<br />

Tel: +49 89 21 95 4710<br />

Email: petra.weitzel@dpma.de<br />

Katarina Mirbt<br />

Email : Katarina.Mirbt@dpma.de<br />

Maria-Victoria Viereck<br />

Tel: +45 4350 85 85<br />

Email: vie@dkpto.dk<br />

Tom Petersen<br />

Email : tpe@dkpto.dk<br />

Gerardo Penas García<br />

Tel: + 34 91-3495580<br />

Email:<br />

gerardo.penas@oepm.es<br />

Provided feedback on examination workflow; a screening<br />

system is used. Considers an automatic search system has no Tel: +358 9 6939 5845<br />

clear benefits as regards processing time. A "traffic light" Email: paivi.raatikainen@prh.fi<br />

system is considered useful.<br />

François-Régis Hannart<br />

+33 1 53 04 55 75<br />

<br />

<strong>IT</strong> Interest - Low Priority <br />

MT<br />

RO<br />

Highly interested but not able to<br />

participate/contribute yet. Interested in further<br />

developments and would be interested in<br />

considering this <strong>project</strong> at later stage.<br />

Interested to participate in all <strong>project</strong>s. Stated<br />

for this <strong>project</strong> that: ": It will be used (when<br />

launched) mainly by examination, opposition and<br />

appeals staff. We expect it to become a daily<br />

working tool for them. And also: we see it a a<br />

natural continuation as the programme 9. What<br />

if it could be treated as an "upgrade" to the<br />

system at point 9? If you accept this scenario,<br />

than the <strong>IT</strong> development should be "merged"<br />

and the business and functional analysis should<br />

include both points."<br />

<br />

<br />

SI Sixth Priority for this Office. <br />

Table 12 - Overview interest national offices<br />

Stefania Benincasa<br />

Tel/Fax: +39 06 4705 5615<br />

Email:<br />

stefania.benincasa@sviluppo<br />

economico.gov.it<br />

Dinescu Ovidiu<br />

Tel: +40 21 312 57 37<br />

Email:<br />

ovidiu.dinescu@osim.ro<br />

Mr. Janez Kukec<br />

Tel: +386 1 620 31 54<br />

Tel: +386 31 571 674<br />

Fax: +386 1 620 31 11<br />

Email: j.kukec@uil-sipo.si<br />

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Cooperation Fund Common Examiner‟s Support Tool<br />

3.4. ANNEX 4 - Profiles for PO Project Team Members<br />

Nature of the tasks Contribute to the definition of high level specifications<br />

Support the preparation of the Functional Analysis Document<br />

Validate the final version of such document.<br />

Liaise with other areas of their own Office‟s business, such as trade marks and<br />

<strong>IT</strong>.<br />

Participate in prototype assessment tests and contribute to the summarize the<br />

feedback<br />

Participate in User Acceptance Tests.<br />

Attend <strong>project</strong> meetings<br />

Report and communicate within the Working Group.<br />

Communicate and liaise with other National Offices which are not part of the<br />

Working Group.<br />

Knowledge and skills Experience in decision taking in the area of trademarks.<br />

Knowledge of the internal processes and workflows<br />

Experience in defining requirements for <strong>IT</strong> systems would be an advantage<br />

Table 13 - Overview PO profiles<br />

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Cooperation Fund Common Examiner‟s Support Tool<br />

3.5. ANNEX 5 - Potential Services and Indicators available via internal data resources<br />

Potential services to render<br />

Trigger<br />

warning Internal resource(s) Contents<br />

Find cases where the trade mark denomination is similar. High Similarity Trade marks Trade mark bibliographic and procedural<br />

Classes of G&S are similar / contained / related<br />

in denomination<br />

+ classes<br />

database<br />

information<br />

Find cases of the same owner. Similarity Case Law: rejected Bibliographic information on cases<br />

trade marks<br />

where the trade mark application was<br />

refused. Links to the original decision.<br />

Identify whether a word or the whole trade mark<br />

denomination coincides with the name of a good or a service<br />

Find cases where the denomination of both contested and<br />

opponent's trade marks are similar<br />

High similarity +<br />

the class of the<br />

hit is in the<br />

application<br />

Similarity in<br />

denomination +<br />

classes<br />

Find cases where both parties are the same. Both parties<br />

coincide.<br />

Find cases where the opponent is a party and check<br />

similarity of both contested and opponent's trade marks and<br />

classes<br />

Find cases where the applicant is a party and check<br />

similarity of both contested and opponent's trade marks and<br />

classes<br />

Find Geographic Indications that match either the whole<br />

denomination of the trade mark or one of its component<br />

words<br />

Find identical or very similar trade mark denominations that<br />

have been registered in other Member states. Classes of<br />

G&S are similar / contained / related<br />

Similarity +<br />

related classes<br />

Similarity +<br />

related classes<br />

Trade marks<br />

database /<br />

classification<br />

database<br />

Oppositions<br />

database<br />

Case Law:<br />

Opposition<br />

High similarity Geographic<br />

Indications database<br />

High similarity +<br />

related classes<br />

TMView database<br />

Table 14 - Overview potential services and indicator<br />

List of goods and services that can be<br />

considered as properly classified.<br />

Opposition bibliographic and procedural<br />

information<br />

Bibliographic information on cases of<br />

Opposition decisions. Links to the<br />

original decision.<br />

List of Geographic indications protected<br />

according to EU law, with indication of<br />

the country and area of origin,<br />

Centralised interface to simultaneously<br />

search in the Registers of several<br />

Participating Offices<br />

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ANNEX : PROJECT COSTS<br />

1.2.10 CESTO (18 months)<br />

1. OVERALL COSTS PER DEPARTMENT<br />

Sum of TOTAL_COST<br />

Row Labels Grand Total<br />

IAERD 714.083<br />

<strong>IT</strong>D 920.000<br />

GSD<br />

HRD<br />

Grand Total 1.634.083<br />

2. OVERALL COSTS PER COST CATEGORY<br />

Sum of TOTAL_COST<br />

Row Labels Grand Total<br />

Integration 315.000<br />

Set-up Costs 315.000<br />

<strong>IT</strong> Project Costs 920.000<br />

Development 600.000<br />

Development 600.000<br />

<strong>IT</strong> Services 320.000<br />

<strong>IT</strong> Consultancy 320.000<br />

Non-<strong>IT</strong> Project Costs 250.530<br />

Meetings 40.530<br />

Accommodation 11.250<br />

Allowance 8.280<br />

Travel 21.000<br />

Translation<br />

Working Group 210.000<br />

Management Reserve 148.553<br />

Grand Total 1.634.083


3. COSTS PER DEPARTMENT 2011<br />

Sum of TOTAL_COST<br />

Row Labels Grand Total<br />

IAERD 135.000<br />

<strong>IT</strong>D 393.000<br />

GSD<br />

HRD<br />

Grand Total 528.000<br />

4. COSTS PER COST CATEGORY FOR 2011<br />

Sum of TOTAL_COST<br />

Row Labels Grand Total<br />

<strong>IT</strong> Project Costs 393.000<br />

Development 200.000<br />

Development 200.000<br />

<strong>IT</strong> Services 193.000<br />

<strong>IT</strong> Consultancy 193.000<br />

Non-<strong>IT</strong> Project Costs 135.000<br />

Translation<br />

Working Group 135.000<br />

Grand Total 528.000


ANNEX : PROJECT EFFORT<br />

1.2.10 CESTO (18 months)<br />

1. OVERALL EFFORT (in MANDAYS)<br />

Sum of TOTAL_MANDAYS<br />

Row Labels Grand Total<br />

External Provider 1.840<br />

Business Analyst 264<br />

IOS Expert 10<br />

<strong>IT</strong> Developer 1.200<br />

SQC Provider 366<br />

Translator<br />

OHIM Staff 516<br />

CF Architecture Team 5<br />

Procurement Team 30<br />

Project Manager 250<br />

Project Team 50<br />

SQC Coordinator 11<br />

Technical Lead 150<br />

Trademark Key Users 20<br />

PSO 20<br />

PSO 20<br />

Grand Total 2.376<br />

2. EFFORT IN 2011 (in MANDAYS)<br />

Sum of TOTAL_MANDAYS<br />

Row Labels Grand Total<br />

External Provider 786<br />

Business Analyst 264<br />

<strong>IT</strong> Developer 400<br />

SQC Provider 122<br />

Translator<br />

OHIM Staff 309<br />

CF Architecture Team 5<br />

Procurement Team 30<br />

Project Manager 125<br />

Technical Lead 75<br />

Trademark Key Users 20<br />

PO 270<br />

Working Group 270<br />

PSO 20<br />

PSO 20<br />

Grand Total 1.385

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