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Tuesday, 22 September 2009

Pending patent backlog at 4.2 million, says WIPO

The IPKat noticed the following press release issued recently from WIPO. Relevant bits are highlighted, for those who tend to find such things interminable [and some IPKat comments are provided in red].

A two-day international symposium concluded on September 18, 2009 with broad agreement on the need to pool efforts at the international level to address the problem of backlogs in patent applications [It's not necessarily a problem for everyone; some applicants like having their applications pending for as long as possible].

Closing the first Global Symposium for Intellectual Property Authorities, WIPO Director General Francis Gurry referred to recently published data that showed that the global backlog in unprocessed patent applications around the world in 2007 was a staggering 4.2 million [This most likely includes some multiple counting of applications having the same priority, which tend to be dealt with once the more important offices (EP, US, JP) have had their go at them]. These backlogs have grown on average at a rate of 8.7% over the past five years. “This is unsustainable,” Mr. Gurry said [But what will happen if it carries on? Will the Earth implode?].

“We have moved beyond consciousness of the need to address unsustainable processing of patent applications to action,” Mr. Gurry said, noting that the main challenge of the future is to promote coordinated international action to enhance efficiency of operations and encourage dissemination of best practices in modernizing the infrastructure, operations and management of IP offices [So no action to actually get more people on the job of searching and examining then...].

Work sharing for prosecuting patent applications was suggested as a solution to existing inefficiencies. Patent prosecution highway (PPH) projects were extensively discussed at the Symposium. Participants concluded that the PCT should serve as the backbone for work sharing in relation to patent prosecution to support existing bilateral PPH agreements. Representatives of the Trilateral Offices (European Patent Office, Japan Patent Office and United States Patent and Trademark Office), attending the Symposium signaled their agreement in principle to integrating PCT work products (PCT international preliminary reports on patentability) into their ongoing PPH projects. Pilot projects are to start in early 2010. The Director General said this was a major development that WIPO warmly welcomed.

New initiatives for work sharing were announced at the Symposium. These include the Vancouver group (Australia, Canada, and UK) project for mutual exploitation of search and examination documents; and a Latin American project to exchange search and examination data on patents and trademarks involving nine partners (Argentina, Brazil, Chile, Colombia, Ecuador, Paraguay, Peru, Suriname, and Uruguay in partnership with the Inter-American Development Bank). Mr. Gurry welcomed new collaboration projects. In response to a call for technical assistance from WIPO in these projects for building a common international patent platform, Mr. Gurry said that WIPO is pleased to provide technical assistance in developing the common platform to ensure global compatibility and interoperability of such initiatives.

More than 40 heads of IP offices participated in the event, together with users of the IP system. Appreciation was expressed for new WIPO initiatives outlined by Mr. Gurry on the enhancement of IP databases, including steps to upgrade PATENTSCOPE® with national patent data collection and the recent launch of aRDi

In facilitating the efficiency of patent searches, participants reaffirmed the need for WIPO to play a proactive role in collecting information on the legal status of patents for inclusion in PATENTSCOPE® [Now this does sound like a good idea; having a reliable and up-to-date source of information on families of applications would be not only of use to patent offices but to the public in general].

The Symposium also provided a forum for the exchange of experiences and best practices in the area of trademark and industrial design registration, arbitration and mediation services for IP-related disputes, financial management of IP offices, and IP office’s role in promoting innovation in partnership with science and innovation institutions. (Access to Research for Development and Innovation) to narrow the knowledge gap in least developed countries [Oh dear, here we go again. What has this go to do with WIPO? Don't patent publications already provide a valuable resource of information that is freely available for anyone with an internet connection?].
The IPKat thinks that making the system more efficient is all very good, but wonders how far this will go in reducing the backlog. Isn't the problem all about the fact that the patent system doesn't pay for itself out of renewal fees anymore? Work sharing can surely only go a small part of the way towards getting the backlog down, particularly when different offices apply different rules on granting patents. How is the real underlying problem of paying for good quality search and examination going to be solved?

7 comments:

Meldrew said...

The basic problem is a failure to plan by the major patent offices.

It has been evident for years that the growth in patent filings has been exponential, but patent office have failed to plan for this.

Of course exponential growth has a tendency to hit limits, but if the limit is the ability of patent offices to deal with increasing innovation, then patent offices are standing in the way of economic growth.

Now the failure to plan is translated into blaming the poor bloody applicant for drafting allegedly lower quality applications.

Additionally, there are complaints about lack of funding. It is a myth that renewal fees are not paying for the system, at least in Europe. For the EPO the amount of their budget funded by renewal fees is growing. It is a fear as to what happens if that growth stops that is worrying the EPO.

In summary - yes there are backlogs - but backlogs can only grow if input exceeds output. Patent offices need to "get their finger out". Perhaps a nice economic crisis will give them some breathibng space to start whittling down their backlogs [provided that some ninny does not regard temporarily reduced demand as an excuse for permanently cutting back examiner recruitment].

IP Mouse said...

"How is the real underlying problem of paying for good quality search and examination going to be solved?"
(and this, of course within a reasonable time frame)

This is a purely political issue and not a money problem. As long as the majority of the heads of national patent offices focus on their national interests (and in Europe they also decide the course of the EPO), better service will hardly have a chance.
Work sharing sounds good but already long ago it was noted by some really bright people that only a centralised system would do away with national differences in search and examination and, not to forget, the enforcement of patents.
Where are we now? After many honourable attempts, is there really a major breakthrough since EPC1973 in Europe?

Anonymous said...

With the current recession many firms are not renewing their patents. In consequence the EPO and other patent office's renewal income is falling but the work from new filings is increasing.

patently said...

The prospect of co-operation frightens me. It means, essentially, that the second and subsequent examiners to get hold of the case will blindly copy the objections raised by the first.

This will be ok if the first one is sensible, but I would say that the chances are against it. After all, the first exam report for a UK-originating case is usually the US or an EP IPE report, so the omens are very bad indeed.

Andrew said...

The cause of a patent backlog is obvious: standards are too low, patents are granted with ludicrous ease, nonsense patents are granted and there are no penalties for trying to game the system.
No increase in administrative efficiency can address rent seeking behaviour, which must be addressed on the level of incentives. Pre-grant opposition, peer review, and penalties for those who try to game the system through over-broad claims, ever-greening, and outrageous and prohibited subject matter claims will reduce the backlog.
But for as long as companies can get monopolies merely by filling in a form the incentives to do so will remain high. Processing those forms faster isn't going to change that.

Chris H said...

"Pending patent backlog at 4.2 million, says WIPO ... backlogs have grown on average at a rate of 8.7% over the past five years"

Umm .. wasn't the backlog higher a year ago at 5-10 million worldwide (according to Alison Brimelow - as reported here).

I wonder how they measure it ...?

Anonymous said...

A few comments...

> some applicants like having their applications pending for as long as possible

Sure, in national and regional phase that is often desired. The backlog in the PCT process itself resulting in no Search Report before having to enter national/regional phase is a big problem, seen too frequently in my fields. You enter on 30/31 month due date and a few months later you end up with a book full of cited documents in category X, destroying novelty in claim 1. No fun.

> having a reliable and up-to-date source of information on families of applications would be not only of use to patent offices but to the public in general

I would add having complete information to that list; too often I discover a patent has entered more countries than shown in Patentscope, not even when patents have been granted is the list updated.

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