FICPI & AIPLA Colloquium, June 2007 A Comprehensive Approach to Patent Quality

Transcription

1 FICPI & AIPLA Colloquium, June 2007 A Comprehensive Approach to Patent Quality Deficiencies in patent applications and problems created by applicants and attorneys Author : J Pearce, EPO Date : 8 June 2007

2 Outline of the presentation Introduction Some problems and deficiencies The EPO experience in numbers Conclusions... 24/09/2007 2

3 Some influences on the development of Patent System Growth in filings (also patents & non-patent literature) Changes in size, complexity (and procedure time) Patenting strategies Drafting strategies Legal traditions, patenting routes, laws Implementation by Patent Offices (resources, Rules including fees, Guidelines) Results : Pressure on quality Systemic problems and risk of system failure? 24/09/2007 3

4 Number of Applications at EPO Filings doubled in less than 10 years 24/09/2007 4

5 Ten year growth by technical area and filing route higher growth-rate PCT rapid emergence new tech. 24/09/2007 5

6 Growth in PCT route : EURO-PCT as % of all EP-Fillings Proportion of EURO-PCT from all Fillings % of EURO- PCT Years /09/2007 6

7 Working definition of the objective of the patent system : To stimulate innovation by issue of quality patents What are quality patents? (A question to examiners, applicants, representatives and public) a) 'patents resulting from conformity with the provisions of the EPC' (or applicable law) b) 'An optimum combination of validity, timeliness & cost' Deficiencies and problems a) definition b) support in dealing with c) 6 example areas of problem and deficiency on filing 24/09/2007 7

8 Support to decisions in the Patent office Deficiency in relation to EPC Problem for the : Receiving Section? examiner? patent system? Patent Office decisions EPC clear No room for manoeuvre EPC Articles and Rules qualified Guidelines, Examiner discretion, Office ethic e.g. Novelty, right to be heard, time limits for payment +/- supp.... if possible as far as known where applicable... Applicant friendly Informal interviews (telephone interviews) 24/09/2007 8

9 1. Excess Independent claims per category 1) Only one independent claim per category (product, process, apparatus, use) except ---- R29(2) 2) At filing there are frequently multiple independent claims in the same category e.g. with multiple combinations of essential features 3) Deficiency (but no penalty) on filing. Rarely provokes 'no' or 'incomplete' search (R45) 4) If non-unity is identified : 'Partial' search (A82,R46)). The first invention is searched 5) No independent claims fee in EPC at present 24/09/2007 9

10 2. Many dependent claims - especially trivial claims 1) Intended for possible use in combination with other claims to establish patentability (A52-57) 2) Relatively few objections on basis of A84, R29(5) 3) Even trivial claims may require documentary proof at a later stage in the procedure (workload) 4) Contributes to the workload problem 5) Procedure time impact 24/09/

11 3. (First) independent claim is trivial 1) Independent claim is often very broad (in relation to invention). 2) X-citations easily found (lack of novelty) - invention is hidden. There is a danger that the real invention may not be searched or adequately searched. May even hide multiple inventions 3) Applicant (eventually) files amended claims drawing on description or from deep in the original claims. 4) The applicant must claim the essential features of the invention. If some are omitted this breaches A84, R29(1) and is a deficiency Adds to the workload pressure on the examiner Causes delays : applicant has up to 6 months to respond by filing amended claims Creates uncertainty for competitors as to the scope of any eventual patent 24/09/

12 4. Lack of unity 1) A82 deficiency. May be combined with trivial independent claim With small applicants often accidental Some large companies have frequent accidents 2) Fee reduction strategy (only one filing fee at the start & potential fee savings later) 3) Applicant can file divisional(s) even several years later when it is known which (if any) inventions are worth pursuing 24/09/

13 5. Many embodiments in the description, not all claimed 1) Material can normally be used later in amended claims (A123(2), R86(4)) 2) Can be a claim reduction strategy on filing 3) Content of the description (R27). There is no strong equivalent of A84 for the description 4) Length of the description itself imposes workload on the examiner. However, not a deficiency - can indeed rightfully increase disclosure 5) 'Clauses' resembling claims but not referred to as such. Not normally charged as claims - but appear to be part of a fee reduction strategy. 24/09/

14 6. Other problems on Filing 1) No relevant cited documents (R27.1(b)) - even by large companies well aware of the prior art. Search is significantly more efficient with relevant documents available at the start 2) Missing reference signs in claims (R29(7)). These can be very helpful in understanding features of the claims in relation to the technical drawings. If otherwise a direct grant, the examiner may insert the reference signs - to avoid writing a communication and waiting many months. (sent with the 51(4) communication 24/09/

15 Problems during examination procedure 1) Amendments : A123(2); A123(2)/(3) - applicant /rep. should take care - added subject matter; Oppo 'trap' 2) Replies not to the point (non bona fide), or matters filed (deliberately) not in conformity with the EPC 3) Amended claims & unsearched matter : Rule 86(4) 4) documents submitted shortly before oral proceedings (conflicts with efficient procedure) 24/09/

16 More patent filings : Greater understanding of the value of IPR Globalisation Success in using the system to support patentees' objectives Bigger & more complex filings Also as in the examples given : General tendency for more complexity / less transparency Trend towards fee reduction & fee postponement strategies Longer procedure times, more communications How do these trends combine to affect the EPO? 24/09/

17 Average claims at filing by year of filing 24/09/

18 Average Claims at Filing by Applicant Country Grouping (PCT Route) PCT 24/09/

19 Pages at Grant by Grant Year US p43.c27 JP p30.c17 GB p29.c21 DE,F,IT, CH,BE,AT p 14-17, c /09/

20 Non-Unity: # Inventions identified by examiner vs. paid inventions by year of search Partial Searches and Inventions Found versus Paid EP+PCT Orders Paid Inventions Inventions Found 24/09/

21 Average years to Grant for EP Applications (filed 1999 grant by June 2006) 1999 EP filings 24/09/

22 Workload growth (schematic) Overall growth in workload Growth in filings by route Cooperation factor Complexity factor Size factor Time 24/09/

23 Searches reports with at least one X citation 24/09/

24 Growth in filings x growth in claims Filings x Claims Filings 24/09/

25 Industrial User (F Hagel, EUPACO,2007) Industrial users of the patent system are simultaneously applicants, patent-holders and third parties The logical position of an industrial user is pro-balance in the system 24/09/

26 The patent system user may simultaneously : a) have an opinion on Patent Quality as a member of the public e.g. He supports high quality patents having the essential features of validity, timeliness & cost-efficiency in the public interest b) have the following wishes as an applicant : to obtain maximum scope for the patent sought to maximise and maintain uncertainty for competitors to minimise or delay costs To gain time in the procedure in order to assess the value of the invention in the light of other developments internally & by competitors nevertheless - to be able to switch into top gear when needed to have a patent product in hand have the opposite views as a competitor on another file Where does this lead? 24/09/

27 Individual interests versus system interests? Typically such conflicts results in one or more of the following : failure of the system imposed regulation self-regulation (Partnership, Codes of conduct; etc) system feedback loops to increase stability e.g. fees related to the work generated; discretion to apply the rules correctly but strictly to discourage clear excesses on filing and 'non bona fide' extensions to duration of the procedure. 24/09/

28 USPTO experience : Claims Distribution for EP Filings having a US Priority - Fee changes do influence application size 40% 35% 30% Percent 25% 20% 15% 10% 5% 0% > 101 Claims Year of Priority USPTO claims fee increase for claims above 20, Dec /09/

29 Possible developments 1) Fees : more closely related to the workload generated? 2) Partnership for Quality? 3) Application of the Rules - ensure some tasks move back where they were originally intended to be located? a) Failure to identify relevant art even when clearly known b) Too many independent claims per category c) etc.. 4) If problems & deficiencies grow at filing, pressure for procedure changes may arise : e.g. there could be calls for an Examiner first action to communicate a priori deficiencies (rectify before search with limited time to respond) 24/09/

30 FICPI & AIPLA Colloquium, June 2007 A Comprehensive Approach to Patent Quality Which path forward? Deficiencies in patent applications and problems created by applicants and attorneys J Pearce, EPO June /09/