One of the most popular contributors to this weblog, curiously, is not a member of the blog team at all: it's Suleman Ali, of boutique practice Holly IP, whose earlier guest posts here, here and here have attracted a disproportional quantity of hits and readers' comments. This Kat would like to say a formal "thank-you" to Suleman, who has on several occasions risen to challenge of writing a piece for us when there was no spare Kat to do it. Anyway, here's Suleman's latest post for us. It's a review of a somewhat unlikely document on a decidedly unsexy subject [except for us IP addicts, notes Merpel]. Read on:
The United Kingdom Intellectual Property Office (IPO) has recently published its Discussion Document: the Publication of Patent Applications. The purpose of the document is to ask for feedback on specific ideas the IPO has had for changing the way patent applications are published. This is not, unfortunately, a call for radical ideas on how the publishing of patent publications could be changed, and disappointingly the ideas proposed by the IPO are not very radical. However the Discussion Document does provide food for thought.
Food for thought?
A veritable cornucopia
The IPO proposes two main ideas and they are both based on the proposal to allow publication of a patent application to occur without a search having been performed. The first idea is to cater for applicants who file a patent application in order to disclose the information to the public, rather than for the purpose of obtaining a patent. The IPO want to have a system where in such cases the applications can proceed to publication without the need for the IPO to waste resources in producing a search.
The second idea is to make the system more flexible by allowing the applicant to have the option of requesting publication any time before 18 months without the need for search to have happened. Presently the IPO will only publish an application early if a search has been performed.
There is a third minor idea about the IPO issuing ‘certificates’ to applicants that want to prove to others that their application has been published.
Should the IPO assist applicants who only want publication?
The IPO has observed that in about 25% of cases where an applicant is informed under the ‘Action Before Search’ program that the application has serious issues and is unlikely to be granted, the application is not withdrawn and goes on to be searched and published. This has made the IPO wonder whether the purpose for filing was simply to have the case published, rather than obtaining a patent. The SOLO IP blog has already written on the issue of applicants asking the IPO perform unwanted searches and has made a ‘call to arms’ to address the problem.
The IPO says it wants to use its resources efficiently and so does not want to carry out searches where the applicant only wants publication, and does not intend to pursue the case further. In such instances the IPO proposes to publish the application with a footnote saying that the case will not progress further. The IPO notes that publication of the application would offer the applicant ‘the ability to stop others from patenting the same invention later’. However, it could be argued that there is the bigger question: should the IPO offer a specific service that would be detrimental to the position of third parties who want patent protection in that area? Surely the ‘purpose’ of the publication is not to stop others from patenting, and so perhaps the IPO should not be publishing for this purpose.
Some folk will stop at nothing
to publish their inventions
Should applications be published without search results?
The proposal to allow applicants early publication without a search having been performed means that third parties will be alerted to patent cases without the search results being available yet. That means they will be in the position of knowing that the applicant is trying to obtain patent protection, but they won’t know the IPO’s view of the most relevant prior art. Will that oblige them to carry out their own searches for their own peace of mind and that of their investors? It could also be argued, to the contrary, that knowing about relevant patent applications as soon as possible is preferable to not knowing.
Do published patent applications help the world?
Classically the reason for applications being published is as part of the bargain with the State for it granting a monopoly to the invention. It is assumed that society benefits from knowing about the invention. However, is that still the case? Do patent applications disclose useful scientific information? Apparently studies suggest that in some fields they do. Given that fact, perhaps the IPO is right to consider giving more options to applicants to publish early. That will help in disseminating useful scientific knowledge.
What are the consequences of having more prior art?
A pioneer, in theory ...
Making it easier for applicants to publish earlier and offering this as a distinct service will mean there will be more prior art for subsequent applications to contend with. Does this matter? Well, there have been suggestions that the patent system favours the ‘pioneer’ in a technical area. The broad protection obtained by them can inhibit subsequent development of the technology by other parties. More prior art will mean that those other parties are also going to find it harder to obtain their own patent protection. I would say that, as a ‘policy’ consideration, that is important.
The incompetent applicant
So often the most relevant prior art cited against an application is one of the applicant’s previous published patent cases. Often decision-making in research organisations cannot deal with the fact the publication of applications occurs at 18 months, and subsequent patent cases suffer because they have not been filed within 18 months of the earlier case. That is simply what happens in practice and the IPO's offering applicants more options to publish early will make it happen more often. Should the system protect incompetent applicants? I believe it should at least think about them.
More radical changesWhat do you think? The Kats would particularly like to receive comments from those who have experience of more than one national patent system and who can compare and contrast
submarine patents which ‘emerge’ when the market has grown. So clearly publication before grant is very necessary.
Is mandatory publication at 18 months the most appropriate term? Anecdotally I would say that it is long enough for the applicant to get to the next patentable finding and file the next patent application. However clearly it would be impossible to say what is best for the economy or for technological progress, and I’m sure the answer would be different for different areas of technology. It is also a question that I’m sure the IPO would realise is too complicated to ask, and so publication at 18 months will not be changing soon.