For the half-year to 31 December 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Rebecca Gulbul, Lucas Michels and Marie-Andrée Weiss.

Regular round-ups of the previous week's blogposts are kindly compiled by Alberto Bellan.

Friday, 31 January 2014

Grumpiness when rhetoric does not match reality

This Kat is grumpy about pretty much everything at the moment.  He is weary of explaining to clients and patent attorneys outside Europe that, contrary to what they may have read in announcements from official sources that no, the Unitary patent will probably not be cheaper than their European patents as currently validated; it certainly won’t be quicker; and the 2014 start date is a figment of some official’s imagination.  (UPDATE 1 Feb 2014 - this Kat posted about a similar outbreak of grumpiness when Austria ratified the UPC agreement last year.)  He has been pondering the reputational damage and waste of time and energy involved when official announcements  fail to actually reflect the reality of what has been achieved, with the result that it falls to professional advisors to disabuse expectant applicants and explain to them the real position.

This sin of over-hyping has been a constant bugbear of the PPH system (and was being complained about by sabbatical Kat here).  It has always been the case with PPH that, in return for actually rather onerous and significantly expensive administrative requirements (submitting copies of office actions and translations together with claim correspondence tables), the only thing that is offered is accelerated processing.  Not preferential treatment on substantive matters.  Not a presumption of allowability, let alone “rubber stamping” of a decision of another patent office.

Even with the global system,
it's still a complex network!
So when this Kat read the announcement by our dear blogmeister of another development of the PPH system the other week, another small part of him died inside.  What has really happened is that a bewildering pattern of bilateral agreements has been partly replaced by one overarching agreement in respect of some, but not all, the participating countries.  This is lovely.  But the fact is that practically the scope of the new agreement is very similar to what was in place before, and actually, when an application had been allowed in one jurisdiction previously, it was the work of moments to determine which countries were eligible for PPH based on this development.

So now let’s turn to the UK IPO announcement.

This will significantly simplify the process for businesses, and help to cut the time and cost of seeking patent protection in key global markets. Er, no it won’t.  The process involved is exactly the same as before.  The time taken to grant may be quicker as compared with the non-PPH system, but the time spent dealing with each patent office will likely be the same, and may actually be more (because of the requirement to file copies of office actions, translations, and correspondence tables), and so be more expensive.

It will also help cut the global problem of patent backlogs.”  Er, really?  Each office still has the same size backlog, it is just that the order of cases in the queue is shuffled.

“The new Global Patent Prosecution Highway pilot is a real step forward. It is a significant achievement that brings together, and more closely aligns, the work of the key global patent offices. The real benefit is to businesses and other applicants, who will see patents handled more quickly and efficiently across global markets. This will reduce complexity and time and cut costs.”  The only word in this that seems true is “quickly”.

Although the use of bilateral PPH arrangements is increasing (the UK recently signed an agreement with China during the Prime Minister’s visit in December) the UK has been working to establish a PPH framework that covers multiple countries to better allow businesses to protect their intellectual property in overseas markets.”  This Kat entirely fails to see how the PPH acts to “allow businesses to protect their intellectual property in overseas markets.”

Confidently, but miserably, expecting his mewing to fall on deaf ears, this Kat wants to issue a plea – please can official announcements about legislative developments be congruent with what has actually occurred?

10 comments:

Anonymous said...

Well said, Darren. Not sure about the "quickly" bit, though...

Wouter Pors said...

Indeed, initially the hopes were that the Unitary Patent would be cheaper. However, I'm not sure that still is a real priority. Representatives from Dutch industry have taken the position that if the total level of renewal fees (traditonal and Unitary) would go down, the EPO might need to raise pre grant fees, which is even less desirable. So, the current thinking might be that properly balanced costs are preferred over low post grant costs.

Unitary effect can be registered after grant of the European patent so indeed, prosecution by nature will not be faster, but the advantage is that the applicant can evaluate the strength of his patent after grant and then decide whether it is strong enough to expose it to a central attack on validity before the UPC.

The 2014 start date was a political desire from the European Commission, simply to have it before the elections. The Preparatory Committee has never mentioned such a date, but has always said that it is aiming for 2015.

So, I feel much less grumpy about these changes; overly optimistic political statements are being replaced by more thorough considerations and I am still quite happy explaining this to anyone outside Europe (as well as in Europe).

Wouter Pors
Bird & Bird

Anonymous said...

At least this PR nonsense allows you to put a smile on our faces on a dull Friday afternoon

ron said...

These days, about the only spin-free stuff that emanates from the IPO seem to be the steering board minutes, which tell things like they are.

Darren Smyth said...

Dear Wouter Pors

Thank you for your comment. Of course the Preparatory Committee has not mentioned a too early date - that Committee is composed of people who know what they are talking about.

I should be be clear that my grumpiness is about the announcements that do not match reality, not about the Unitary Patent (or indeed the PPH) as such. I wrote about a similar bout of grumpiness last year:

http://ipkitten.blogspot.co.uk/2013/08/yet-more-on-unified-patent-court-plans.html

I have now amended the post to add this link.

Darren

Anonymous said...

Getting back to the issue of the PHH, I have always been very sceptical about the re-use of search results. What it essentially means is that the application gets fewer eyes to look at it, and that any deficiencies in e.g. novelty overlooked by the first examination may only be discovered in litigation. If one is lucky, perhaps it is discovered for opposition use.
For this reason I invariably recommend my clients not to use the EPO as ISA – it is one of the few advantages left to Denmark that we can choose between EPO, the Nordic Patent Institute and the Swedish Patent Office. The Nordic Patent Institute is to a large degree the Danish Patent Office, and if the priority application has been filed in Denmark, well that search might be a repeat performance. Hence the Swedish Patent Office is the choice. This means that the EPO cannot simply just rubberstamp the Search Opinion but has to perform a search upon entry. This hence means 3 pairs of eyes on the application, rather than 1 (shudder, shudder!) if the priority application had been filed with the EPO! The larger industry, where quantity means more than quality, obviously enjoys getting enforceable rights quicker, and the burden of litigation to the defendant may not enable him to find and use better prior art in defense. Quite apart from bifurcation. That is why you find big industry supporting the scheme.
For a similar reason I do not like the idea of the Cooperative Patent Classification because it causes uniformity of thought, and the chances of finding equivalent technology in a field that is approached from a different direction is inherently suppressed. In its utmost consequence it would mean that in future, prior art is only relevant if it carries the identical CPC. This, then, moves the ability to decide technical issues to the realm of classifiers who have made the decisions once and for all (or at least until the next revision).

Kind regards,


George Brock-Nannestad

ex-examiner said...

I was an examiner with the Patent Office until the late 1980's, and until then, pretty well all the senior staff from the Comptroller-General down had worked their way up the ranks from being a "Coal-face Examiner". The Patent Office was seen by mainstream Civil Service admin staff as the Siberian Salt Mines of the DTI: it was such a well-oiled machine that there was little scope for career development. IP then had a low-ish public profile. Announcements were usually made by the Comptroller, who could speak from a position of personal experience.

Things changed in the mid-1980's. The then-Government's policy of privatising everything led to the appointment of successive Comptrollers chosen for their expertise in privatising government departments, and, when legal grounds made privatisation impractical, expertise in relocating government departments. The new breed of head man and the growing public awareness of IP seems to have made the Patent Office a more attractive career posting for mainstream senior civil servants. Important announcements are now normally made by politicians, and in all probability probably drafted by their press officers, who, in today's political atmosphere, will understandably be keen to put as positive a spin on the news as possible to enhance the standing of their minister.

The IPO has my sympathy. I recall attending a meeting at CIPA in 1990 where Patent Office representatives spoke with enthusiasm about the prospective attaining of Agency status and how they hoped that this would release them from the shackles of the Treasury and allow them to behave in a commercial manner by offering services that they were currently unable to offer due to centrally-imposed staffing levels. Agency status appears to have had the opposite effect. The steering board minutes often mention the conflict between on the one hand, things that are necessary for efficient operation of the office and on the other hand, the need to meet government targets. One example is the £25,000,000 that the IPO is earmarked to contribute to BIS funds as a "dividend" out of out of its surplus that could presumably have covered the salaries of the 20 or so Patent Examiners that were forced to take early retirement about 5 years ago to meet manpower targets, and that at a time when there was already an examination backlog. Overtime working has had to be resorted to ever since, just to keep their heads above water. I fear that politicians see the PPH as the Philosopher's Stone that will magically both reduce the prosecution backlog and also allow further manpower cuts to be made.

Anonymous said...

Your views, ex-examiner, sadly reflect only too strongly the actual history that the USPTO suffered under (think Dudas) and now seems to be again suffering under (think management by unnamed committee).

Political rhetoric routinely trumps substance in the development of current patent law, and soundbyte activism is prized higher than thorough and rational discussion.

C'est La Vie.

Anonymous said...

It should not be forgotten that the Abridgments of Specifications were the basis of all pre-1979 Act searches, and that they were written by the Examiners specifically as a search tool. They were informative to a degree that applicant-written abstrats are virtually never rising to.
At the same time, the British patent classification was applied so that each technical feature, irrespective of its place in inventiveness, was identified with a classification (well, subclass in great detail). This meant that a publication had a string of classifications far longer than that appended as IPC or CPC to modern inventions. This had the consequence that one could search by Boolean combination of classifications. This method of searching was also offered the general public.
It is extremely laudable that Espacenet has made abridgments available as the abstracts of pre-1979 UK patents. However, it should be borne in mind that in the various printed classified volumes of Abridgments, there were differences according to the subject classification. I have collections of Abridgments that are at variance with those scanned for Espacenet. At the time it all helped to get a good grasp of prior art.
This was a time when there was an appreciation that the temporary right to prevent others from using a particular technical solution should not be given lightly. In the Netherlands, the patent was issued with a state guarantee, which led to bifurcation in litigation, whereas in France it was S.G.D.G, Sans Garantie de Gourvenement, and it was up to litigation to find out whether there was a right.
Ex-examiner above has succinctly identified how matters developed, but not why. Why does quality in work that is touted as essential to technological development merit so little support in the official budgets?

Kind regards from an oldtimer,


George Brock-Nannestad

ex-examiner said...

My time at the Patent Office convinced me that governments of any persuasion are generally motivated to bring about change by two things:

a. to comply with policy;
b. to save itself money.

Policy will generally trump common sense and commercial considerations in that doing something that will cover its costs or actually make money, but which is against policy, will be difficult to get done.

Come the 1977 Act, the powers-that-be must have taken the view that, as the applicant was now providing an abstract (note: abstract, not abridgement: they are different things), examiners could increase their productivity by paying less attention to the description (saving money by doing away with the check on the sufficiency of the description of all the embodiments that used to be done while preparing the abridgement). Little weight was given by officialdom to the loss of information retrieval capability. The letters pages of contemporary issues of the CIPA Journal contain many pleas for the retention of examiner-written abridgements, indicating that clients would be prepared to pay extra for this service to be continued. Alas, to no avail.

An almost-forgotten aspect of older UK abridgements was that, prior to the 1949 Act, the files of applications claiming priority under international convention were laid open to public inspection 18 months after the priority date. The abridgement was based on the "laid open" state, and could thus contain subject matter that was subsequently deleted from the specification and drawings. The prosecution files of these applications were destroyed long ago, so unless the corresponding foreign applications can be traced, the only extant disclosure of the deleted matter is what is in the abridgement itself. Not a completely academic point: a former information scientist colleague recently found herself in exactly this situation, having found a tantalising mention of something that wasn't there in the printed patent.

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