"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