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Thursday, 4 March 2010

"Keeping the patent system fit for purpose"

An EPO post summarises the recent speech of current European Patent Office President, Alison Brimelow with the title "Keeping the patent system fit for purpose". A cynic might suggest that this begs the question as to whether the patent system was fit in the first place. The IPKat thinks it is, but the real question lies in what the system is fit for: no system is designed to be tested to destruction, though that's what may be the prospect facing one of Europe's most important, least loved and possibly least appreciated institutions.

Anyway, according to the release which accompanies Ms Brimelow's text (which you can read in full here),

"If the patent system is to remain fit for purpose in the future, "greater integration and the creation of a truly global, sustainable patent system" are needed, says EPO President Alison Brimelow. With the "IP5" initiative, the foundations of such a system are being built, which will enable efficient work-sharing among the five largest patent offices.

Invited by the Melbourne Law School to hold the 2010 Francis Gurry Intellectual Property Lecture, in a speech entitled "Not seeing the wood for the trees: Is the patent system still fit for purpose ?" the EPO President reflected upon the challenges that patent systems are facing worldwide. "The R&D paradigms have changed, the function of IP is shifting, but patent systems have failed to adapt and develop in consequence." Moreover, she stated, the patent system is "far too complex, and this complexity increases exponentially in the international arena".

Referring to the soaring workload challenges and the related backlog situation patent offices are facing today, she stated that the patent system had become "a victim of its own success [this is an important point, often missed]: backlogs have been ballooning [... and metaphors have been mixing], with the EPO having some 490 000 files expecting treatment. The Japanese Patent Office has to deal with around 870 000 unexamined files and the USPTO with 810 000." The quest for an ever-broader geographical scope of patent protection is one of the key drivers of the growth in patent applications: in 2008, more than 250 000 patent applications were filed in more than one of the five largest patent offices, which are the EPO and the patent offices of Japan, Korea, China and the US. "Given the size of backlogs and the current volume of incoming work, it appears unlikely that the present economic crisis will suffice to re-calibrate the patent system in a lasting manner", she said [this is an allusion to the drop in PCT filings, which fell by 4.9% in 2009].

Alison Brimelow also touched upon the issue of substantive patent law harmonization. Today, industrialised countries would call for a global patent system that "in the best of worlds" would start out with "an international infrastructure operating under a harmonized body of laws, regulation and practices. Yet at the moment, international normative initiatives are at a standstill", she said, referring to the decades of efforts of international patent law harmonisation pursued within WIPO and in other fora [The standstill may be a sign that the existing system has created an equilibrium between competing interests which can't be eliminated]. She concluded that "there is a gap between what people say and what people are prepared to do". She reminded the audience that "inherent in the concept of harmonization is change. If we are not prepared to change, we cannot possibly pretend to be serious about harmonization" [The first part of this proposition is correct: harmonisation involves change -- but each party ideally wants the others to change, which is where part of the trouble lies].

Given the failure of harmonization, global backlogs have become a driver for change, "as they have created a powerful impetus for reducing unnecessary duplication of work" in patent systems worldwide, the EPO President said [The unnecessary duplication has been part of the scenery for so long that many people stop become blind to it; but it is an unjustifiable and wasteful burden that is ultimately borne by users of the patent system and by the public purse]. She strongly advocates improving the existing PCT framework, as it harbours the greatest potential for a global work-sharing scheme due to the high volume of applications filed, the existing legal framework and infrastructure, established procedures and also its acceptance by the users.

Turning to recent developments in Europe, Alison Brimelow announced that the work-sharing scheme of the EPO will enter into force in January 2011. Noting that "timeliness and high quality of work-products as well as confidence-building and coordination between offices are essential ingredients for these schemes to be successful", she stated that the EPO's objective was "to eliminate unnecessary duplication of work with a view to enhancing both quality and efficiency", emphasising in this regard that "a key principle is that utilisation remains at the discretion of the EPO examiner" [this concession is presumably if the support of highly-skilled staff is to be obtained and then retained]. The EPO scheme will apply to work results not just from the national patent offices of member states, but from any office of first filing in the world.

At the international level, the EPO is cooperating with the patent offices of Japan, Korea, China and the US within the so-called "IP5" to achieve greater operational integration and engage in "the creation of a sound, viable, sustainable global patent system [this vocabulary conjures up images of freshly planted saplings and biodegradable examiners], focused on work-sharing. In my view, the IP5 is potentially as big as the conclusion of the EPC in terms of its significance for the patent world. It will enable efficient work-sharing which will deliver long term and sustainable benefits for all, even without any substantive harmonisation breakthroughs", she said.

Noting that the IP5 foundation projects are "ambitious and require a considerable investment of scarce resources in the present", she explained that they are "not politically attractive because, unlike the PPH [= patent prosecution highway], for instance, which permits quick headlines, the IP5 projects will deliver productive results and momentum beyond electoral periods". For that reason, she concluded that it was "vitally important to enhance IP5 visibility and keep the pressure on."

More generally, commenting upon the rise of the patent system from relative obscurity to greater prominence and a heightened level of public scrutiny, Alison Brimelow deplored the absence of "evidence-based policy-making" in some quarters, and remained critical of "policy initiatives which either treat the patent system as a lightening conductor for other problems or as a dustbin for difficult issues" [Jolly good, but with the proviso that those who call for "evidence-based policy-making" base their policy on the evidence once they've got it].

Finally, as the President of the EPO prepares to retire from her office, she shared some parting words of wisdom with her audience: "I think that we are all a little short on courage, we could do with clearer ideas, and finally, we should embrace change better." As she regularly reminds her colleagues at the EPO: "Shape the future, or it will shape you".

Meanwhile, instantly responding to the call for evidence-based policy-making, the IPKat is delighted to tell his readers about the launch, in London next week, of a new piece of research which examines the cost of backlogs in the global patent system. According to the IPKat's invitation,
"The new study was carried out by London Economics on behalf of the Intellectual
Property Office and is the first of its kind to look at the issue of backlogs.

The results highlight the significant and wide reaching implications delays have for the global economy. The results of the research will be of great interest to business, policy makers and the global IP community".
The Kat -- who looks forward to bringing more news once it becomes available --understands that there will be a press briefing with David Lammy, Minister of State for Higher Education and Intellectual Property, not to mention David Kappos, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark
Office (USPTO). Excellent, he purrs, once we have the facts we can base our policy on them! Not quite, says Merpel: this is the real world. Once we have the facts, we can manipulate them ...

Wikipedia on backlog here ("An example is the backlog of unexamined patent applications")
Logjams here
Keep fit here

8 comments:

Derek said...

"Reducing unnecessary duplication of work" sounds wonderful as a partial solution to the backlog problem. However, what is "unnecessary duplication" or even "duplication", beyond the pure formalities which PCT handles pretty well, when different countries have different tests for patentability? Some of these are evident, like grace periods, where laws differ; others less so, like enablement and inventive step, where laws look similar, but the results differ from country to country on the same facts - for example, see the Trilateral Project comparative study on inventive step at http://www.trilateral.net/projects/worksharing/study/cases2.pdf. We can all trade stories on how the same application got treated differently in different countries, perhaps less so if the application is mechanical, definitely more so if it's pharma or biotech, and *** if it's computer-related. So it's far more than just a matter of "do I trust examination by the xxxPO?", it's a matter also of "does examination by the xxxPO fairly assess patentability under my laws?". To change that will require the world equivalent of the proposed Community Patent, and maybe more.

Anonymous said...

And who believes that when an EPO examiner, confronted with a search of a national office, will conduct a further search for which he will get no extra points, as this is considered by management "duplication of work", even in cases when the national search was completely useless?

MaxDrei said...

Sympathy from me, to EPO Examiners. My experience is also, that the earlier national search is "useless". I am the representative and will write the claims. What I expect from any Patent Office worth its salt is a top quality search report. Everything else is secondary. If EPO Examiners are being encouraged by management to ignore bad searching, I'm not happy.

Anonymous said...

I am very unhappy with the concept of PPH (Patent Prosecution Higway) and work-sharing between the 5 offices. It leads to worse examination overall. To those who really, really love registered rights SGDG (Sans Garantie de Gouvernement) and 'let's meet in court if you dare', obviously this is the way to go. But the much more numerous general public needs well-examined patents. Sadly, the industry lobby is all for avalanches of dubious patents, and the politicians dare not oppose that.

But that is not the way to aid SMBs. If a fight has to take place to prove your freedom to operate instead of merely studying the granted claims, then society should compensate SMBs by giving grants to legal aid. I feel quite convinced that this would be much more expensive than assuring claims restricted according to merit.

Alternatively, and I have said this before, SMBs must get together to file massive amounts of oppositions against non-deserving patents. Yes, it will cost something up-front, and if you duck, you may not be hit by these ridiculous patents, but a massive opposition campaign will be the best public demonstration of the swamp the patent systems are slowly gliding into. It will also act as a feedback on the examination, and it is the right time to attack. And the good thing is that this has been demonstrated before in history, and very successfully.

Kind regards,


George Brock-Nannestad

Jeremy said...

From a business perspective, I don't think that badly examined patents are such a big problem -- and they're certainly less of a problem than mountains of unexamined patents.

I maintain that the reason why granted patents are challenged in EPO oppositions and in subsequent court litigation is not that they're bad but that, regardless of their quality, they constitute a barrier to something that someone else wants to do. Look at how many good patents are expensively and extensively challenged, and upheld: this isn't going to change.

MaxDrei said...

Jeremy, the EPO annual report, long ago, would publish the nationality of the Opponent. Every year, 70% would be German. Why that? Because it's their culture. Why that? Because of their bifurcation between infringement proceedings and validity attacks (the "nullity" suit). So, if you are nervous about a district court judge in Duesseldorf enjoining you on the basis of a patent, invalid but which the judge must treat as valid, better get your retaliation in first, and smartly oppose.

Incidentally, for in house patent departments, setting juniors on opposition work is good low cost training.

When my client gets opposed, I comfort him with the thought that the opposition proceedings, even if only a "coarse filter" in the eyes of the national judges, nevertheless represent an opportunity to put the patent into great shape for subsequent litigation, with a usefully high presumption of validity. Very handy for an SME needing to reassure its investors.

So, where does that leave us? Tinker with one aspect of the system, I would suggest, and you get knock-on effects (mostly unforeseen) all over the shop.

I suggest that the best way the EPO can help SME's is 1) continue to be strict about the admissibility of amendments, post-issue, and 2) travel the world reminding Applicants and their patent attorneys that leaving it till after issue to make a valid set of claims could have very expensive consequences so, in their own self-interest, they ought to take care to bring to issue in Europe only those claims which to the best of their knowledge are valid.

Anonymous said...

Am I alone in thinking that Brimelow has been far and away the worst EPO president? She spends time pontificating on cost savings by work sharing between offices which apply different laws, but presides over an organisation which repeatedly introduces highly burdensome procedures to mis-address perceived problems (new divisional rules, refusing to search additional inventions, refusing to examine searched inventions unless they are at the front of a set of claims - to identify just a few). All of this forces applicants to spend much more money to get a patent than they should have to. And don't get me onto the subject of the size of their official fees.

Anonymous said...

This is in reply to Jeremy on
Friday, March 05, 2010 9:43:00 AM

I agree that there will be a backbone of opposition cases filed against well-examined patents by organisations that can afford it and to ensure freedom to operate. If they are founded in prior art it strengthens claims that survive an appeal. And if they are upheld it is feedback on examination well done.

However, I cannot agree that “badly examined patents ........ they're certainly less of a problem than mountains of unexamined patents.” The reason is that the granted claims can form the basis of quite legitimate infringement cases. A sensible proprietor of such a patent will wait for 9 months until such a suit is filed, and this means that the postponement (frequently against deposit of an amount of money) that you can obtain in court if an opposition is filed is no longer available. A European patent attorney filing an opposition is probably much less expensive than a barrister in an infringement case. My conclusion is that unexamined patents create a legal insecurity on the one hand, but time to collect evidence of e.g. prior use. But a badly examined patent creates a legal security that you are in danger of being attacked.

As there are many more potential infringers (manufacturers) than patent proprietors, all manufacturers ought to be as vigilant towards what happens in the patent field as they are towards developments in local tax rules. This has become much more difficult, however, as the translation requirements for granted European patents have slackened: who in their senses really believe that SMEs in small countries are happy with descriptions written in English?

Kind regards,


George Brock-Nannestad

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