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Tuesday, 17 April 2007

Open Letter From a Coalition of Patent Examiner Representatives

The following memo was noticed on Greg Aharonian's Patnews service. It is an open letter to the heads of the US, European, German, Canadian and Austrian patent offices, from the heads of the professional associations or unions for examiners in each Office.

"April 13, 2007

To: Mr. Jon Dudas, Director, United States Patent and Trademark Office
Prof. Alain Pompidou, President, European Patent Office
Dr. Jürgen Schade, President, Deutsches Patent- und Markenamt
Mr. David Tobin, Commissioner of Patents, Registrar of Trademarks and Chief Executive Officer, Canadian Intellectual Property Office
Dr. Friedrich Rödler, President, Österreichisches Patentamt

Re: The Future of the Patent System

Dear Sirs,

History shows that a strong patent system is essential to the health and economic well-being of nations. Patents stimulate innovation and economic growth by motivating inventors to invent and to share their inventions with the world.

The importance of intellectual property is demonstrated by the increase of new patent applications during the last twenty years. Recently, however, many in the intellectual property community have come to realize that an increase in patent applications does not necessarily represent an increase in technological progress. They now recognize that poor-quality patents can become a hindrance to, rather than a stimulus of, innovation and economic growth. They understand that a strong patent system requires high patent standards and quality examination.

Patent offices worldwide continue to focus on their backlogs of applications and ways to increase examiner productivity. Unfortunately, in many patent offices, the pressures on examiners to produce and methods of allocating work have reduced the capacity of examiners to provide the quality of examination the peoples of the world deserve. Quality examination requires skilled, well-trained and motivated examiners, powerful and efficient search and examination tools and, most importantly, the time necessary for examiners to apply those skills, training and tools to the examination of patent applications. The pressure on productivity has greatly reduced the sense of job satisfaction of examiners, who feel unable to take the time to do the job justice. This has damaged the motivation of the examiners with concomitant impact on the operational effectiveness and the quality of output of Patent Offices.

Consequently, we, the undersigned representatives of patent examiners, join together in declaring that the combined pressures of higher productivity demands, increasingly complex patent applications and an ever-expanding body of relevant patent and non-patent literature have reached such a level that, unless serious measures are taken, meaningful protection of intellectual property throughout the world may, itself, become history.

We, therefore, strongly urge you, the leaders of major patent offices around the world, to:

  • Increase the quality of examination by providing patent examiners with more time to search and examine patent applications.

  • Acknowledge the importance of protecting the intellectual property of inventors while simultaneously protecting the public domain by removing from any reporting, rating or incentive systems any bias with respect to granting or not granting patents.

  • Guarantee the independence of the examination process so that it is governed solely by the legal framework.

  • Ensure that examiners have the opportunity to maintain their legal and technological competence by providing adequate and continuing legal and technological training.

  • Maintain staff skills with search, examination and administrative tools by providing regular update training.

  • Recognize the considerable investment patent offices have in their staff by developing and maintaining collaborative rather than adversarial relations with employees and their representatives.

  • Strengthen the world’s patent systems by encouraging your respective governments to provide standards of patentability that reward innovation while discouraging undeserving patent applications so as to provide a strong presumption of validity for issued patents.


  • Respectfully,

    etc."
    The IPKat agrees wholeheartedly with each of the points listed, except for the third one which he doesn't understand. Is there a suggestion that there is something not in the 'legal framework' that examiners are being asked to do? I think we should be told.

    Merpel points out that the UK examiners must be very happy with their lot since they didn't take part, which she assumes is a good sign.

    7 comments:

    Luke Ueda-Sarson said...

    "The IPKat agrees wholeheartedly with each of the points listed, except for the third one which he doesn't understand. Is there a suggestion that there is something not in the 'legal framework' that examiners are being asked to do? I think we should be told".


    Might this have something to do with interviews with the examiner?, the results of which often can change a rejection into a successful application, and thus are vital to the issue of patentability, but a transcript of which is of course never recorded, let alone placed in the file - and under US practice, the file wrapper is very important in determining the scope of the claims. IIRC, the pertinent points of the interview are supposed to be recorded in writing, but of course this is observed more in the breach, leading to problems.

    However, this seems more like a litigators complaint, and not an examiner's complaint.

    Perhaps it is something to do with reports of pressure being put on US examiners to reject applications under US 101 without citing any pertinent caselaw or statutory provisions - Greg Aharonian is very big on "technical" after all. I hear some art sections - business methods in particuler - have enromous projected prosecution perids at the moment.

    But again, this doesn't seem like a problem that examiners would seem to be overly worried about, in as much as it doesn't affect them directly - unlike say, the shortened amount of time they get to read claims, etc.

    Certainly, essentially accusing patent offices of acting ultra vires like this isn't likely to endear the writers to the readers...

    Regards, Luke Ueda-Sarson

    David said...

    If I might add a comment from the IPKat's friend Tibor Gold:

    "Not difficult to understand. Examiners are asked to meet quotas and performance targets which pressurises them to grant patents not because they fulfil norms of patentability but norms of Stakhanovism…."

    For those not brought up under a communist regime (which includes this Kat), a definition of Stakhanovism may be found here.

    Rodrigo Calvo said...

    At least this former EPO examiner can say that in the EPO context those pressures outside the "legal framework" probably refer to the somewhat curious definition of "quality" of examination which the management tries to impose and which includes, besides and at the same level as the validity of the granted patents, the speed and cost of the examination procedure...

    This said, I don't envy the situation of the managers of those patent offices either: on one hand they have to ensure that ever-increasing numbers of ever-more-complicated patent applications are processed and compared to ever-larger mountains of prior art, and on the other hand they obviously can't keep increasing their staff numbers ad infinitum...

    Anonymous said...

    Maybe the UK PTO didn't take part because nobody thought it worth asking. I am disappointed that the EPO staff association signed. I wonder whether it was a close call. In my field, medical devices, the numbers go up, yes, but so is the quality, and the backlog is falling fast. This particular reader salutes the efforts of EPO management to keep the ship sailing forward, and salutes just as sincerely the great efforts of the Examiners to get trained and work with care, efficiency and fairness to both Applicant and Opponent.

    Anonymous said...

    I can't see the 'peoples of the world', to whom this memo seems to be addressed (in addition to the personal addressees), taking to the streets in sympathy with patent examiners. Particularly those in Darfur.

    There's a point when professional pride gives way to hubris and this crosses the line for me.

    Michael Heseltine ( a well known British politician) once famously said that his constituents did not demand a new trade mark act when he was campaigning.

    Is patent examining really that important ?

    Rodrigo Calvo said...

    Well, that "peoples of the world" reference is not really much more hubristic than the one about the "citizens of Europe", in the EPO's Mission Statement.

    I presume that somebody may have been feeling sarcastic, rather than hubristic...

    Anonymous said...

    From one anonymous to another: In all fairness, we all know patent examining is not that important. We also know that trademark acts are not all that important, and certainly if that is not important, IP Agents and Judges are not that important and neither is the whole issue of Intellectual Property. So why are you looking at this website? The Acts, the case law and the examination process are the foundations of IP, even if IP is only a house of cards...

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