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Thursday, 15 May 2008

Who is responsible for the patent backlog?

The IPKat noticed this rather provocative statement made today by the (normally very sensible) Joff Wild in his IAM magazine blog:

"Any patent attorney, will tell you, off-the-record, about the little tricks they pull to keep an application alive when it is clear it has no chance of finally being granted; they will laugh as they recount the applications that they have submitted in the full knowledge that they should not lead to a patent; they will shake their heads and smile wryly at some of the stuff that has got through, which should not have done. Taken individually, each of these stories is pretty harmless. But then when you think that just about every patent attorney in the world can tell them, you begin to understand how we get the backlogs we do. And, don't forget, patent offices know these stories too."
Now, if by 'little tricks' Joff means tricks such as leaving responses until the last day (+ 10 days, of course, where appropriate), applying for extensions, using further processing where necessary, filing divisional applications and appealing against refusals, then this patent attorney would like to point out, on the record, that these are all perfectly legal and entirely above board (if sometimes rather expensive). If there are other tricks available that somehow bend or break the rules, perhaps these should be pointed out so we can all discuss them openly. Otherwise, this sounds a bit like the EPO complaining that patent attorneys sometimes know the rules better than they do. And how many patent attorneys would have the nerve to send someone away purely for the reason that their invention appears to be rubbish?

20 comments:

Anonymous said...

Look, if you can just get it past the Examiner, you get to issue, with a presumption of validity, no danger of a finding of invalidity unless the proof of obviousness is "clear and convincing" and the prospect of an injunction and a multi-million quantum of damages. Is it any wonder that patent attorneys don't give up till the position is utterly futile (and when do we ever get to that point?). I'm talking USA, of course, but that's the biggest single market right? How much different it would be, in a world where patents issuing from the PTO are like little turtles issuing from their eggs, high up on the beach, and the petitioners for revocation are like the skuas circling over the beach on which the little turtles are scuttling towards the safety of the sea. Only the toughest turtles make it to safety (like in England perhaps?). Don't waste your money breeding softback turtles. And make business methods unpatentable. Getting rid of the backlog is not really rocket science now, is it?

Anonymous said...

Come off it, David, Joff is singling out the motivation behind the actions, rather than whether they are lawful. He is simply pointing out, quite rightly, that patent agents regularly use all the available rules to prolong the life of applications which are dead in the water, and he is suggesting that this contributes to the current backlog. Clearly, if they are competent (and mindful of their indemnity insurance) patent agents will tell their clients when the potential for a granted patent is low, but I am regularly party to “how long can we keep it alive” discussions and which are motivated only by maintaining the risk factor for the competition, whilst a patent remains theoretically possible. Please do not try to suggest that this occurs because patent agents have big hearts or weak nerves. The debate to have is whether there is anything wrong with these tactics if they do create the backlog – even though they are lawful. Personally, I see nothing wrong with them - or at least nothing that could be done to prevent them, without prejudicing the rights of “legitimate patentees”. Clearly, if it was identified that the rules were being used to prolong the life of applications which are dead in the water, to a level where this was responsible for a significant element of the backlog (I do not know the answer to this and nor do you) then this is a sensible debate to have – how to balance the rights of all. Clearly, Joff has an agenda (which he does not conceal) but characterising his statements as not sensible is a touch rich.

Anonymous said...

Agreed. Who are we to judge the quality of an invention, even if we advise that it has little chance of success?

I have had numerous clients who are convinced that their idea is going to make them a lot of money and they need the protection. I usually advise an early search and that has a reality-check effect (usually!).

If we're talking about prolonging "pending" status by filing examination responses which are clearly not going to be successful, we are only representing our clients wishes, not trying to break the system.

Anonymous said...

Blame the attorneys? Ridiculous. We do what applicants want. And who says backlogs in general are a problem anyway? The only backlogs that matter are those where you want your patent granted and the Office haven't bothered to examine it yet. I never yet heard anyone complain about a patent being voluntarily delayed. The real reasons people delay prosecution are usually that your small client can't afford all those translations at grant just yet.
What is really going on here? A diversionary attack on attorneys by Trilateral leadership (political appointees, in the case of the EPO and USPTO) to hide their dramatic slashing of the acceptance rates from 72% to 44% (USPTO) and 68% to 54% (EPO) - with worse to come.
These guys have forgotten what they are here for (or been replaced by people who never knew, or just don't care) - running a patent office isn't about managing queues as a management exercise, but granting patents to inventions where requested, and refusing unpatentable ones in the public interest.
Starting from the premise that the queue is too long and then slashing the accceptance rate to cut the number of patents and scare off applicants, as the Trilateral are doing, will just penalise small entities with great inventions - and crash what remains of the attempt to make Europe competitive.
Dave M

Joff Wild, IAM magazine said...

My agenda is to get users of major patent offices thinking about the backlogs that are being created. I do not think that patent attorneys are doing anything illegal, but I am asking whether many of the things that they do on behalf of clients are in the best interests of the patent system as a whole, which is under scrutiny and attack like it has never been in the past.

I do not deny that I greatly sympathise with patent offices who are bein asked to handle many applications which they (and I) do not believe are being submitted in good faith. But in the ed, this is not a patent office versus patent ofice users argument, it is an argument about the integrity of the patent system. Here's why ...

The more poor quality applicaitons that are submitted, the more poor quality patents are going t issue. This seems simple common sense to me. The more poor quality patents there are, the more the patent system as a whole is brought into disrepute. If that happens, you end up with politicians listening to the anti-patent lobby, with all te dangers that presents not only to the future of innovation but also to those who earn a living from patents at the moment. I am not saying this will happen next month, next year or even in five years time, but unless something changes it will happen.

Now, of course, patent offices have to ensure that they offer the best possible service. They have to employ the best examoners and have the best procedures in place. But they cannot do it on their own. They need the help of people that use patent offices. I don't think they get that help at te moment. Too many people are happy to complain without offering workable solutions to the problems that offices currently face. That is certainly what I see in the US.

In Europe what we have is probably more a state of indifference or denial that there are any problems in the first place. But there are. In five years time it is predicted there will be a backlog of one million applications at the EPO - a blackhole containing who knows what and creatng levels of uncertainty that will surely prove unhealthy.

Think about that is what I am saying. And ask yourselves whether there is really nothing that users of the system can do to make it better.

Anonymous said...

Requests for extensions of time are simply clerical matters which cannot take long for Patent Offices to process. The fourth examination report on a given application cannot take anything like as long as the initial search and first examination report as the examiner is now familiar with the case.

The way forward has to be to continue to increase the capacity of Patent Offices and the quality and speed of examination.

And for those who are not fans of patents on computer-implemented inventions, have the Patent Offices considered hiring more examiners and examining these cases like a rocket? The current situation, in which CIIs are examined at well below the speed of treacle doesn't help anyone.

Anonymous said...

So long as the USA perceives its national interest to lie in having business methods patentable, and so long as new eTech products embody thousands of patented details and are built to accord with a Tech Standard, there will be huge numbers of pat applns filed and prosecuted. But if the US Congress tweaks US law so that 1) Loser Pays and 2) tribunals after issue give no deference to the work in the USPTO prior to issue, the backlog in the USPTO might be more manageable thereafter.

Gobhicks said...

The exponential progress of technology is responsible for the patent backlog. Applicants have always gamed the system to serve their interests. That existing problem is merely exacerbated by the increasing volume of applications filed.

The real problem is the amount of time and resources that the system requires to be expended on every patent application (particularly in the US in the absence of deferred examination or maintenance fees for pending cases), the large majority of which, even if ultimately granted, will never be of any particular interest to anyone.

Ever increasing backlogs will become a serious problem as Joff says. But they are not the fault of either the applicants or their attorneys.

The answer is root and branch reform of the patent system on a global basis to take advantage of the possibilities for public notice, peer review, selective examination, etc. afforded by the interweb. And all that that requires is global political agreement.

Damn.

We ARE doomed.

Anonymous said...

EPO accepts software patents now, which accounts for 20% of applications.

EPO should not complain about the backlog if they grant software patents against their own guidelines of 1978 and against the EPC.

David said...

"The more poor quality applicaitons that are submitted, the more poor quality patents are going to issue", says Joff.

Hmmm. An interesting hypothesis. Now why would that be? Is it because a fixed proportion of 'poor quality' patents inevitably gets past the examination process? That would be the only 'common sense' reason for the number of poor quality patents being granted to rise. Unless, of course, there is some other factor being brought into the equation, causing this proportion to increase. Perhaps standards are slipping at the EPO? Perhaps examiners are being too lenient? Perhaps there are more inexperienced examiners around now who don't really know what they are doing? Perhaps examiners are being rushed into making bad decisions? Perhaps patent attorneys are just too damn clever at doing the job their clients are paying them to do? Which is it to be? Do you blame the EPO for not allowing the examiners to do their job properly, or do you blame the attorneys for doing their job too well? The best way to tackle the problem must be to address the quality of examination, and not to start blaming the motives of applicants or attorneys. Applicants and attorneys will always try to push the legal boundaries of what they can get away with as much as possible, and the EPO has the job of defining these boundaries according to the statute. The law must work equally for all applicants, or not at all. Either patent applications are allowable or they are not. It is for the EPO to decide (and for the rest of us to pay for it).

Anonymous said...

OOOOH I see, now I understand, it is entirely the fault of the EPO. Well I'm glad we got that cleared up.

Wait a minute though - when a manufacturer receives raw materials of lower than necessary quality and tries to produce finished goods with them, the results are invariably unsatisfactory and the blame has to be put for the most part at the feet of the supplier, since he has an obligation to supply raw materials of an acceptable standard. The manufacturer carries some blame in the sense that quality control checks should be made to ensure that the raw materials are of an acceptable standard. However, in the case of the EP patent applications (the raw material of the EPO), there is no way for the EPO to oblige applicants to draft their applications in a way which is a realistic expression of the invention and as such, as far as I can see, if poor quality applications are filed blame lies fairly and squarely at the feet of the drafters (applicants and attorneys), not the EPO.

Furthermore, the whole reason for filing unreasonably broad applications is principally to scare competitors into avoiding large technical areas, because it is impossible to tell which part of a broad claim will end up being granted and so subject to provisional protection and the examination process is longer because the application is so deficient.

This uncertainty is where the damage lies principally and since the EPO cannot influence drafting behaviour before filing, it has no control over this legal uncertainty, because the EPC does not provide for preventing applicants from filing applications which do not conform to the EPC.

Furthermore, as more and more poor quality applications are filed, these applications consume a disproportionate amount of resources in the search and examination process compared to applicants who are paying the same filing/examination/search fees but who draft their applications in a reasonable way.

The profession cannot offload its share of responsibility for this problem onto the patent offices. To say that a representative is only doing his job if he tries to obtain for his client that to which he has no right, is an abdication of responsibility. The patenting process should be seen as a legal and technical validation and a co-operation between representative/applicant and patent office to obtain fair protection for what has been invented.

Anonymous said...

Incredibly biased post, this one. Patent attorneys are just doin their job, guvnor. Of course, their job is to get a patent granted, regardless of how original or not they know it to be.

It's all just a conspiracy against the pure upstanding patent attorney, says Dave M. Offices are "Starting from the premise that the queue is too long and then slashing the accceptance rate to cut the number of patents and scare off applicants". You do realise that rejected patents usually take longer to process than granted ones, don't you? Perhaps if agents stopped submitting such useless applications in the first place, they'd get more of the ones they did submit granted, and the Offices would all be able to process them a lot more quickly.

mupple said...

"I am asking whether many of the things that they do on behalf of clients are in the best interests of the patent system as a whole" (Joff).

"Yes m'lud, I did receive my (now ex-)client's clear instructions to request further processing and to file that response to the Office Action. But m'lud, I thought the position was weak and, frankly the arguments were a bit rubbish. I took the view that following the instructions was not in the best interests of the patent system as a whole..."

Gobhicks said...

Re Anon 19/5/08:23

1. The EPC places many substantive and formal requirements on the content of a patent application. Failure to comply with these can and does lead to refusal.

2. The EPO is becoming increasingly strict on issues such as clarity and sufficiency, particularly the idea that a broad claim must be supported and enabled across the full breadth of its scope.

3. The new claims fee regime will definitely limit the number of claims submitted per application which in turn will limit options for amendment in view of Art 123(2) and the requirements for further search/division for unsearched subject matter.

4. Expect to see new rules for divisionals addressing “abusive” “continuation” practice.

Patent Attorneys must put their clients’ interests first and foremost. There is nothing “wrong” with gaming the system within the rules. However, patent attorneys do not serve their clients’ interests by drafting poor quality applications that lead to high official fees and prosecution problems before an appropriate claim can be granted or the application refused, UNLESS that’s what the client wants for whatever reason.

Anonymous said...

Re - Response to my post of 19.05. 08:23. This reminds of a joke about a lawyer. A client pays his lawyer in cash. When the client has left and the lawyer counts his money, he realises that two fifty pound notes are stuck together, so that the client has overpaid to the princely sum of fifty pounds.

This leaves the lawyer with an excrutiating ethical dilemma - should he tell his partners?

By the way if the profession continues to game the system within the rules, the rules will be changed. This is already happening as you stated. Consequently, it is in everyone's best interests not to game the system by subverting systems in place for (abusive) purposes for which they were not intended.

The tightening up of divisionals is a case in point - this has been misused for years, where applicants file a divisional before oral proceedings and prosecute this if a refusal follows rather than pursuing what was actually intended by the legislator - i.e. an appeal. The purpose of divisional applications is to allow pursuit of inventions excised due to a lack of unity, but this has been subverted to a purpose which the legislator never intended it to serve. The tightening up of other procedural matters at the EPO is a natural reaction to this kind of misuse. After all, an applicant for one case, is a member of the public for another so what a client loses on the swings of tighter controls on his own applications he gains on the roundabouts of greater legal certainty for other people's applications.

Gerontius said...

Anon, May 19, 8:23:00 AM, I'm afraid your analogy with manufacturers receiving raw quality materials is laughable.

The EPO don't making patents, they merely approve (or not) patent applications sent to them. If they grant a bad patent, that is entirely their responsibility unless an attorney/applicant has been underhand or outright deceptive in hiding the weaknesses of the application.

If you want to use your analogy, the only way to do so is to put the inventor in the position of the raw material supplier, the attorney in the role of the manufacturer, and the EPO in the role of a standards agency deciding whether the finished product is up to scratch. On that model, and by your reasoning, the inventors are primarily to blame for bad applications.

Sometimes, an application can be bad despite good raw materials since attorneys are not infallible. But that doesn't excuse the EPO from granting a bad patent. They have the final say on granting patents, not the attorney and not the inventor.

Perhaps more attorneys should reject the low quality inventions rather than attempting to "build" a patent application from them. In my experience, though, most inventors think their invention is great and still insist on a patent application. You're then pretty much obliged to do the best you can with the invention you have. The only time I've ever felt I could actually refuse to draft an application was when I got phoned up by a nutter with a perpetual motion machine.

tragedy of the commons said...

I could wax hours about unduly broad claims and the catch_me_if_you_ can mentality of some attorney/companies.
How do you know I am an examiner?

But about gaming the system as long as it is in the interest of the client, I have a plea for the so clever attorneys:
don't just satisfy yourself with infringing the rules requiring references signs in the abstract and the claims, and a meaningful summary of the invention in the abstract (further put a copy of the silly first claim as abstract).
Make some willful errors,confuse the claim language more, make skillful obvious errors and omissions in the description and figures you can still correct...
In short, render the first official publication incomprehensible before the tenth read.
The office cannot do anything against that before the grant and your client is advantaged in that he doesn't have to hold his side of the bargain with the public , this pesky duty of disclosure. And the cost in examiner time are payed by the other naive applicants.
You will be in breach of you fiduciary duty if you don't do that!

But please do it heavily and often: I need to see the rules changed fast, for finally be allowed to counter the "I got mine" crowd before I get my pension.

Gobhicks said...

Re Re Anon 19/5/08:23

There are lots of good jokes about lawyers. One of my favourites is:
- What do you call ten thousand lawyers at the bottom of the ocean?
- A start.

I’m just grateful I’m not actually a lawyer, but a European Patent Attorney (US Patent Attorneys really are lawyers).

Look, it’s actually very simple. It isn’t my job to judge clients or their inventions. It’s my job to advise my clients regarding the options open to them in engaging with the patent system in any particular set of circumstances, including the likely costs, benefits and prospects for success. They decide what they want to do, and I do my best to achieve whatever it is that they want, within the law and the rules, including the rules of professional conduct. It’s my duty to explain to an applicant faced with oral proceedings that filing a divisional is an option to be considered, because an appeal will take years while a divisional might deliver enforceable claims sooner. The divisional will only be granted if there is sufficient basis in the application as originally filed for a set of acceptable claims. The applicant pays for the searching and examination AND pays accumulated maintenance fees. The system provides options (intended or not) and the users of the system make the best use of those options according to circumstance. If particular practices are deemed to be abusive, the rules get changed.

See my first post above for the REAL source of the problems. I don’t notice anyone disagreeing with that. How many patent attorneys and patent examiners does the world actually need?

Anonymous said...

Gobhicks, how exactly do you see a divisional for an application (that you apparently expect to be refused) get to grant earlier than the appeal to succeed?

Are you counting on the examiner to die, get promoted away, retire, flee the office, or just get tired?

And what are the chances of a divisional to be granted sooner than the appeal to be decided? Of course, if you believe the appeal deserves to fail it's another story. But then the advice to the client should be that filing divisionals is the way to keep the application pending indefinitely. Of course make sure to withdraw the parent before the application is refused in oral proceedings for the world to see.

Gobhicks said...

Anon, seems that there may be a misunderstanding of what I meant, but the real point is that when a number of procedural options are open within the laws/rules, professional advisors have an obligation to explain the options and their pros/cons to clients so that the clients can make an informed decision about what to do. It's not the advisors' job to judge that some options should not be put to clients. I'm my clients' agent, not their conscience. If I have a real problem with doing something that a client wants to do, once having had the benefit of my advice, I'll withdraw my services - I have my own conscience to deal with.

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