Three Heads, one mind

It was soon apparent that the three Heads
were in congenial agreement with one another
It's a busy day for the IPKat, so he has popped in and out of the first Managing Intellectual Property International Patent Forum (here) this morning rather than sitting there, glued attentively to the succession of stellar speakers.  The one thing he did attend in its entirety was the press briefing which three talking heads --  USPTO head David Kappos, UK IPO Head John Alty and his colleague, Patent Head Sean Dennehy -- gave to a small but select gathering of press representatives (there were no coffee facilities).

It was soon apparent that the Heads were not invited there in order to air their differences -- their peaceful messages of global harmonisation, cooperation and mutual respect could scarcely be mistaken for anything else. They spoke eloquently on the need to cut the pendency of patents in the pipeline, bust the backlog, generally build up trust and find ways of letting their examiners into each others' computer systems withou too much regard for hierarchies and passwords.

In answer to a question from this Kat about his beloved Peer-to-Patent experiment (currently running in the USA and Australia and, er, not quite in the UK), David Kappos described as "poppycock" the notion cherished by some European Patent Office examiners that the contribution of members of public towards the identification of significant prior art would result in the loss of their jobs, or of their promotion prospects.  Despite having recruited 1,000 new examiners this year, there was no way that the USPTO could swiftly process the half a million applications they were expecting in 2011: "Peer-to-patent is not a substitute for examiners, but assists them", he emphasised -- and there would be no diminution of their sovereignty [Says Merpel, 'sovereignty' is an interesting choice of word, which actually reflects quite well the feeling one gets about certain patent-examining and granting offices].  The current US legislative bill would take Peer-to-patent within the USPTO, so that it could effectively orchestrate crowdsourcing within the system, without prejudice to any crowdsourcing that might be brought to bear outside it.  As for the UK, "We're following in Dave's footsteps", John Alty said.

Managing Intellectual Property's James Nurton asked about the possibility of a global patent system and mutual recognition.  "At this stage this would be A Bridge too Far", said David Kappos, displaying his erudition as a movie buff -- but it wasn't too too far. He also didn't say that the increasing use of bilateral agreements was not the consequence of a failure to achieve broader consensus, pointing out how useful they were in enhancing cooperation between offices and building trust.  Agreements for Patent Prosecution Highways could also be broadened from bilateral to plurilateral in their scope, by the simple expedient of admitting more countries to them.

Finally, what did the team think of the need for more dialogue between patent-granting bodies on the one hand and patent-exploitation-regulating bodies on the other, such as competition authorities?  Virtually painting an image of the lion lying down with the lamb and the little child playing by the viper's nest, David Kappos related how the USPTO had participated in the first ever conference with the Department of Justice and the Federal Trade Commission for exactly these purposes, as could be seen from the current USPTO guidelines on 35 US s.112, which he described as an "outgrowth" of this event.   John Alty confirmed that the Hargreaves Review had been asked to look at the tension [the politically correct term is not tension, but 'interaction'. Thanks, John, for calling a spade a spade] between IP and competition law. Soon we shall know what it saw ...

At this point, no doubt correctly suspecting that the Kat had another 37 questions to ask, James Nurton thanked the Heads and graciously led them to safety and towards the smell of coffee.
Three Heads, one mind Three Heads, one mind Reviewed by Jeremy on Tuesday, April 05, 2011 Rating: 5


  1. David Kappos described as "poppycock" the notion cherished by some European Patent Office examiners that the contribution of members of public towards the identification of significant prior art would result in the loss of their jobs.

    Quite frankly, I know quite a few EPO examiners, and I doubt any one of them has that notion. Since the inception of the EPC, there has been an avenue for third-party observations, including prior art submissions, in the EPO's examination proceedings. This is something the USPTO didn't have before Peer-to-Patent.

    EPO examiners may more justifiedly be afraid of being swamped with reams of entirely irrelevant prior art in high-profile cases. The disastrous quality of submissions in NGO-organised mass oppositions in biotech cases are a fearsome harbinger.

  2. Well, I am an EPO examiner, I don't hold that opinion nor have I ever heard it expressed.

  3. During the 15 or so years that I was a UK patent examiner, I never once received any third party observations. They would have given me more work to do, not less, and could have had a negative effect on productivity by necessitating the issue of additional office actions for which no additional work points would have been awarded.

    When I subsequently worked in industrial practice I found that company policy was not to file third party observations against competitors' pending patent applications. Any relevant prior art that did come to light was kept in reserve for use as a defence against possible post-grant infringement, the scope for post-grant amendment being more limited than pre-grant.

  4. Well, I was an EPO examiner, I didn't hold that opinion nor have I ever heard it expressed.

    My explanation for that statement is that Mr. Kappos may have been hanging around too much with our former headmistress. She was not sorely missed by staff after her tenure ended, and I would guess that the converse is also true.

    Before offering his opinions, the USPTO chief would have been well advised to compare Article 115 EPC with the restrictive requirements set by MPEP section 1134.01 for filing submissions under 37 CFR 1.99.

    The EPO requires neither the payment of a fee by the interested third party, nor does it limit the number of documents submitted. The examining or opposition divisions may consider under Article 114 any arguments explanations offered at any point during proceedings by third parties while the case is pending, and not only bare documents produced within a narrow time window.

    Furthermore, the third party must also serve the documents to the applicant, a task which the EPO will accomplish on its own.


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