For the half-year to 30 June 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Alberto Bellan, Darren Meale and Nadia Zegze.

Two of our regular Kats are currently on blogging sabbaticals. They are David Brophy and Catherine Lee.

Thursday, 8 March 2012

The Highway opens up to more traffic, but where does it lead?

The evening before oral proceedings,
Jasper couldn't help worrying that
his profits would not be big enough
to sway the Examining Division.
Below are three of the many possible strategies available for arguing inventive step at the EPO, deliberately chosen to span the full range of advisability, ranging from rock solid (strategy 1) to "I wouldn't try this if I were you" (strategy 3):

1.    Follow the problem-and-solution approach to the letter
2.    Argue that the suggested prior art combination was the result of using impermissible hindsight
3.    Argue that the unexpected commercial success of the invention provides a more reliable indicator of inventive step than the problem-and-solution approach

In this continuum of possible strategies, where do you think the following argument belongs relative to numbers 1, 2 and 3?

        Argue that the EPO should allow the claims because they have been amended in line with those allowed by the USPTO.

This is a line of argument which is frequently advanced by clients and foreign associates (sometimes, alas, it is the only reason they provide in their instructions, despite there being no overlap whatsoever between the EPO objections and those which may have been encountered abroad). This Kat tends to rate the prospects of it succeeding considerably below strategy 2 above, and accordingly he tends not to argue based on USPTO allowance for fear that it will result in one of two reactions from the EPO examiner:

       "Yes, we're all very happy to hear about your success before the USPTO, but you see we have this big problem with D1 and D3 -- they render claim 1 obvious. And the US examiner never specifically considered the argument as I have set it out. So let's just see where the problem-and-solution analysis takes us, shall we?" 

or
       "Errm, the US claims were not just amended during prosecution, they were pretty much rewritten. Just look at all that underlining in claim 1! And claim 7 seems to have popped out of nowhere, fully formed like Botticelli's Venus. Is this one of those TV shows where a hidden camera somewhere is recording my reaction, or is this simply a cunning ploy to get me to issue an invitation to the Hague for oral proceedings?"

The IPKat's musings in this regard were triggered by the EPO announcing that has recently extended the life of the Patent Prosecution Highway (PPH) pilot programme, which it runs in co-operation with the USPTO and JPO (Japanese Patent Office). The trilateral programmes will run for a further two years, and they have liberalised the entry requirements, meaning that a greater number of EP applications will now qualify for entry onto the Highway.  Essentially, the new rules mean that it is no longer a requirement that the EP case claims priority from a JP or US counterpart or vice versa to qualify, or that they stem from the same PCT application; it is sufficient that they come from the same patent family, sharing a common priority claim. 

The announcements are carried in the most recent Official Journal (see the notices here, here and here) and contain a bewilderingly impressive range of examples of complex family relationships in the form of flowcharts showing how related cases qualify for PPH, one example of which is illustrated below. 
One of the thirteen examples provided showing how a pair of EP and US cases might be sufficiently related to benefit from PPH
(As an aside, the IPKat notes that the USPTO has taken to calling this revised system “PPH 2.0” - which surely signifies that the new incarnation of PPH must be infinitely better than that grubby old 1.x version. The JPO, in contrast, have gone with a lyrical and poetic style – they call it “PPH Mottainai”, the latter Japanese word meaning "a sense of regret concerning waste when the intrinsic value of an object or resource is not properly utilized".)

The PPH is essentially marketed (to EPO users, but it works reciprocally) as a way to get accelerated and more efficient prosecution at the EPO based on a positive indication of patentability in the US or Japanese offices.

Mottainai - so much better than "2.0"
Picture courtesy of 5chw4r7z.com
The system still works the same as it previously did at the EPO: upon getting a notice of allowance from, say, the USPTO, and provided that examination has not yet started in the EPO, you can ask to avail of PPH, leading the EP application to be "processed in an accelerated manner while at the same time allowing the offices involved to exploit available work results" (wouldn't it be great if the official EPO notices were written with a dose of the Japanese lyrical style? - Merpel). You can also request PPH even earlier, on the basis of a positive PCT search report or examination report prepared by the USPTO or JPO.

The acceleration part is easy to understand: a PPH application is fast-tracked using the EPO’s long-running PACE programme for accelerated search and examination. Pausing at this juncture, acceleration under PACE  is available for any EP application, any time based on a simple request with no qualification criteria like the PPH. So there's no extra acceleration gained by requesting PPH treatment.

Do PPH examiners follow one another's lead like this?Or is
the picture just included because these are cats?
What about the second benefit, the EPO can exploiting the USPTO’s “work results”? The IPKat does not believe that an EPO examining division can allow itself to be greatly influenced by what happened in another office. Articles 94(3) and 97 oblige the EPO examining division to make its own determination of whether or not the application meets the requirements of the EPC. There is no provision in the EPC or in the Guidelines for any shortcuts or for any delegation of decision-making based on the results of foreign prosecution, so it’s difficult to see how the views of the USPTO or JPO examiner can be taken into account to any meaningful extent. As a practical issue, probably 60-80% (this is a pure guesstimate) of allowed US cases have been amended during prosecution with amendments that will raise some objection under the EPO's Article 123 practice, so there's no hope of getting the same claims allowed anyway. 

True, using the other office's "work results" does suggest that the EPO examiner can streamline his or her search based on the work done abroad, but bear in mind that the EPO Examiner usually has access to those foreign search results regardless of whether the EP case has been marked for PPH treatment.

The IPKat therefore genuinely struggles to identify any benefits of PPH treatment at the EPO, when compared with the simple tactic of telling the EP examiner that the claims are the same as those allowed in another trilateral office at the same time as requesting PACE accelerated search and examination. The IPKat would genuinely be delighted to learn that PPH gave some proper advantage beyond what one gets by simply requesting PACE, if someone can enlighten him.
The network of PPH co-operation

What about in the USPTO or JPO – are the benefits easier to quantify? And what about readers' experiences before other patent offices (PPH may have started life as a bilateral transatlantic affair before blossoming into a trilateral ménage, but as of today there are no fewer than 24 patent offices participating in some form of PPH co-operation)?

The JPO keeps a portal website on the PPH with a surprising wealth of information, including statistics which show that usage has been relatively modest at the EPO - in the three-and-a-bit years since PPH began (from September 2008 to December 2011), there were 684 PPH requests filed at the EPO. In comparison, there were 6354 such requests filed at the USPTO and 1791 at the JPO. (The US and JP figures are largely based on co-operation between those two offices, rather than e.g. US and Japanese applicants requesting PPH treatment based on the granting of corresponding EP cases.)

Let's give everyone priority over the rest of the traffic
Maybe the issue with PPH at the EPO is that it is comparatively unattractive only because acceleration under the PACE programme is so readily available. The IPKat wonders if this universal availability is necessarily a good thing. After all, if every driver is given a police car with permanently flashing blue lights, nobody gets the priority needed to bypass rush-hour traffic in an emergency. Indeed the EPO's own PACE notice (linked to above) suggests that many applicants request acceleration of all of their cases, which inevitably gums up the system for everyone else. Is the PACE system over-used? Does the EPO exercise its power to require serial requesters of PACE to limit their selections? Would PACE work better for the truly urgent cases if there was some threshold to qualifying for this acceleration? If some restriction was introduced for PACE it would surely lead to an increased uptake for PPH processing.

12 comments:

Anonymous said...

The whole PPH system is an utter joke of a political gimmick. The USPTO gets the search results from other offices through the IDS, anyway, and the EPO has R. 141 now too. And accelerated examination under PACE puts far more constraints on the applicant than on the examiner, anyway!

The only point of the PPH is to give an opportunity to the management of all the participating to issue grandiose news releases congratulating themselves.

Roufousse T. Fairfly said...

In this continuum of possible strategies, where do you think the following argument belongs relative to numbers 1, 2 and 3?

Argue that the EPO should allow the claims because they have been amended in line with those allowed by the USPTO.


My answer: none of the above, this argument belongs in a category by itself, as it can be put forward independently or together with the other ones.

At best, you will provide entertainment for the examiner and her colleagues during the morning coffee break. An attorney resorting to this line of argument will normally be perceived as desperate and/or slavishly following his clients instructions. Next stop: Oral Proceedings.

Even though this argument is most often seen in files originating from the US and making reference to the USPTO, I did see similar wording emanating from German, Italian, and French applicants, and not only from unrepresented private inventors. They seem to forget that FR and IT essentially [still] effectively have registration systems. In the German cases I was tempted to write back that they are always free to withdraw the DE designation and keep their precious national patent.

Among other "strategies" I can cite:

- File seemingly heavily amended claims, where in fact only the order of the words has been modified, or redundant ones were added, without modifying in any real way the scope of the claimed subject-matter.

- Argue at length about the inventiveness of some features found in the description, whilst "forgetting" to restrict the claims correspondingly.

- Suggest that the examiner is incompetent, drunk, biased, guilty of hindsight, inherently incapable of understanding the brilliant invention, etc. (rare from representatives, but a favorite of private applicants).

- Adopt a patronizing tone. ("If the examiner was actually skilled in the art..." Gosh, if they only knew...)

- Smoke screen (verbose replies, dwelling on an irrelevant part of D1 whilst keeping silent on the novelty-destroying passage, etc).

- The mechanical reply: "D1 does not disclose [full recitation of claim 1]", without any further arguments.

- "Claim 1 is novel and therefore inventive". I have to say that I did not only read this in replies, but also in internal memos ("Votum") setting out the reasons to the division why grant is recommended.

And you forgot that absolute classic chestnut: "If feature X was so terribly obvious to the skilled person as the examiner purports it to be, why then wasn't it disclosed in D1?" To which I was burning to respond in kind: "this feature is so incredibly obvious that no author would bother wasting their time pointing it out" or "you are in effect suggesting that Art. 56 be struck from the book".

This argument was already old hat when a little brochure in German with a title translating to "One hour at the Imperial Patent Office" was published by one Richard Fiedler. The book begins on page 7 with the comment "Nichts neues unter der Sonne (?)" - "Nothing new under the sun (?)", and describes the functioning of the patent (and trademark) office, of the patent system, and of inventors.

On page 40 (41/50 PDF numbering):

„Wenn es wirklich so leicht wäre, wie das Kaiserliche Patentamt meint, daß jeder Fachmann meine Erfindung hätte machen können, warum ist es denn nicht schon früher von einem anderen geschehen, und warum hat denn nicht schon vor mir jemand diese großen Vorteile damit erreicht?“

Fiedler was a former patent examiner turned inventor, whose gifts to humanity counted the flame thrower.

David Brophy said...

I received the following comments by email from Darío Mohammadian Santander of Bardehle Pagenberg in Barcelona, which I reproduce here with his permission as they address the question of what additional benefit you get from PPH that you couldn't get using PACE. Darío says:

- The PPH is one of the many intermediary steps necessary to eventually, one day in the far future, have a worldwide single patent prosecution procedure.

- The different offices are all getting better at searches, and harmonizing their substantive requirements. If quality and benchmark were not a problem, this would be a great way of different offices already accepting each others work, therefore saving on unnecessary duplication (triplication, etc.)

- It is no secret that the main motivation has been the immense amount of backlog the main offices have, especially US and JP, which makes it practically impossible for them to get rid of, on one hand, and provide a dynamic IP system suitable for industry, on the other.

- As you say, many jurisdictions do not have a PACE. Is PPH = PACE + mentioning the positive results of different jurisdictions? Well, it is slightly more than that, even if the slight difference is the formal acceptance that an examiner cannot just ignore what is being presented, but under PPH has to take it into account, even if he eventually disagrees, but after studying the material. I would say this is already positive, even though just slightly positive.

- Another small contribution is the obligation to provide all substantive office actions for the examiner to consider. This is different from just saying that such claim is allowed somewhere else.

- I have to say that when I was EPO examiner, the number of PACE requests was a distinct minority. I believe still most applicants are not in any particular hurry. The police lights still work.

Anonymous said...

The PPH is one of the many intermediary steps necessary to eventually, one day in the far future, have a worldwide single patent prosecution procedure.

This tackles the issue the wrong way around. To eventually have a worldwide single patent prosecution procedure, first you'd need a single set of examination requirements. Then, and only then, could work start to be efficiently shared. As it happens, it is difficult enough to agree within Europe...

The different offices are all getting better at searches,

Very debatable.

and harmonizing their substantive requirements.

Distinctly false. The EPO's 123(2) practice keeps drifting farther and farther away from what is considered sensible by any other office.

It is no secret that the main motivation has been the immense amount of backlog the main offices have, especially US and JP, which makes it practically impossible for them to get rid of, on one hand, and provide a dynamic IP system suitable for industry, on the other.

While there isn't any doubt that the management of those offices definitely wanted to be seen to be doing something against the backlog, so far, PPH has been at best a stunt, at worst a distraction.

As you say, many jurisdictions do not have a PACE. Is PPH = PACE + mentioning the positive results of different jurisdictions? Well, it is slightly more than that, even if the slight difference is the formal acceptance that an examiner cannot just ignore what is being presented, but under PPH has to take it into account, even if he eventually disagrees, but after studying the material.

Firstly, at least at the EPO, it makes no difference whatsoever to the examiner whether he gets that information through the PPH or by any other means. The Guidelines for Examination at the EPO mention the Patent Prosecution Highway a grand total of 0 times.

Another small contribution is the obligation to provide all substantive office actions for the examiner to consider. This is different from just saying that such claim is allowed somewhere else.

Actually, there is no such obligation. You only have to provide the final office action, which usually just says that such claims are allowed.

I have to say that when I was EPO examiner, the number of PACE requests was a distinct minority. I believe still most applicants are not in any particular hurry. The police lights still work.

This is the only point to which I agree (although it may be that PACE requests are much more frequent in certain technical domains). This said, unlike what has been done for PPH, the EPO hasn't exactly fallen over itself to promote PACE. Many applicants have heard of PACE for the first time through the PPH program.

Anonymous said...

The purpose of the PPH is not only to let the head of the USPTO claim that it is addressing the backlog or "harmonization" or whatever. It is also an attempt by smaller offices (including those of European countries) to regain some search and examination work that they lost because of the PCT and the EPC.

The current president of the EPO has made no secret that he prefers the PCT to the PPH and that the EPO does not expect much benefit from its PPH since the EPO is anyway usually faster (or should I say less slow) than the USPTO and the JPO.

Meldrew said...

PPH makes no contribution at all to reducing the backlog, and indeed in the Mottainai version may increase the backlog.
Why does it not reduce the backlog? Because it is simply a means of moving an application up in the queue of applications waiting to be examined. An inevitable consequence is that another application will be moved down the queue. As the application that has been moved up the queue has already passed the filter of another office, there is an above average chance that it will pass muster at the second office. The end result is simply that an application that would have been allowed is allowed sooner, and the quality of the backlog is reduced because an application that is statistically more likely than average to be granted is switched for one that is just average.

Although there is an element of work sharing, in that the office of second filing can use the results of the office of first filing, this is less useful than for cases where the office of first filing has refused the application. A killer in one jurisdiction is likely to be at least harmful in another.

For an application that has passed the office of first filing the most that can be said to the office of second filing is “I didn’t find anything”.

The Mottainai version of PPH is more damaging and has the potential to increase backlogs. In Mottainai the office of first filing can use the results from an office of second filing to accelerate prosecution. Is it me or does this encourage inefficiency? It seems that for applicants from slow countries a potential strategy may be to file an application in a fast country and use the results of examination from that country to get acceleration of the application in the country of first filing. The effect is to export the backlog [and associated work] from a first country to a second country to the detriment of applicants in the second country.

Of course, exporting backlogs is not new, the USPTO have been doing it for years through the PCT. Looking to the WIPO PCT report for 2010 one can see that the USPTO issued 15,811 ISRs while receiving 45,093 PCT applications. Of course those 15,811 ISRs do not necessarily reflect a great deal of examiner work, given that searching is outsourced.

The effect on the offices that do the ISRs is marked, in particular for Korea which has been transformed from one of the fastest ISAs to one of the slowest by the tsunami of US-origin PCT searches.

When one office does not appear to take its obligations seriously it affects all other offices.

Turning to PACE, this system works; in most cases because they are a rarity [about 5% of cases?]. However in some fields it appears they are not taken seriously because [as one examiner said to me] “everyone in this field files for PACE”.

It might be an idea for the EPO to publish information as to PACE percentages by technology so that the users can know when their request will be taken seriously, and when they will need to make frequent telephone follow up calls to ensure the examiner knows they are serious.

Finally, on supply of information from elsewhere, after over 25 years of practice before the EPC I have just received my first ever Article 124 request. Plainly at least one examiner thinks he can learn something from outside the EPO.

MaxDrei said...

Excellent suggestion from Meldrew, that the EPO tells us what percentage of applns, in each field of technology, include a PACE request.Examiner response to a request for PACE varies hugely, and I want to know why.

ex-examiner said...

My experience has been that the EPO does try to be accommodating, but if there is a backlog in a particular field, there is only so much they can do. I had a client request PACE on a large number of applications in a technogy where we knew there was a backlog, and the examiner asked us to rank the applications in order of importance so he could deal with them accordingly.

I agree with most of the previous comments on the usefulness of PACE in Europe. To politicians and senior staff who have had no practical experience of examination, it is attractive because it looks like a way to achieve the holy grail of cost cutting without affecting quality.

Anonymous said...

Sorry, but even the suggestion that the EPO should allow a particular amendment just because it has been allowed in the US (or any other for that matter) PTO is simply a non-starter, to be classified along with the "hereby incorporated by reference" dance, which always has the same ending. It's a simple matter of law - they are different, neither of them recognise any form of stare decisis, and neither really operates in the same way.

Perhaps this might change with the unitary EU patent. Perhaps this might provoke a movement towards mutual recognition of patents from various offices, saving a lot of work and, perhaps, a precipitous rush to the bottom. Perhaps, more realistically, it might change if the EPO and USPTO adopted some of each others' practices rather than adapt laws. For example, the USPTO decides things on rather few communications, the EPO has a rather useful and cheap Appeals process. Otherwise none of this makes any real difference to the way examiners make use of each others' results, because they're widely available anyway.

The golden snitch would be some means of filtering out useless or trivial patents, which clog up the whole system - if only! Until then, we'll just have to remember what to do in whichever version of Rome we're in!

Anonymous said...

It seems strange to me that PACE would be abused; after all grant and validation means annuities would have to be paid to national offices which is likely to be more costly than letting the application simmer at the EPO. In most cases it would be cost effective to let it progress slowly.

The only times I request PACE is when infringers queue up and we need a grant to go to court.

Anonymous said...

@Roufousse T. Fairfly

> - The mechanical reply: "D1 does not disclose [full recitation of claim 1]", without any further arguments.

Well, how would you prefer it? It is not as if one can point to a specific place and exclaim "There it is not!" Quoting the entire D1 as an alternative is perhaps hilarious but definitely ludicrous. All too often I see Examiners state D1 discloses X and refer to a huge swath of text, typically several pages. It is rather suspicious when a more detailled statement seemingly cannot be made.

Also this drives up the cost for the applicant since I have to read the text a few times not finding it, then scan and OCR process D1, proofread the converted text and digitally search using a large number of synonyms just to be really, really sure D1 does not disclose X.

It is at this point representatives reflect on Examiners while also mentally prepare for questions from the applicant when the invoice arrives.

> Adopt a patronizing tone. ("If the examiner was actually skilled in the art..." Gosh, if they only knew...)

Have you considered how the representative came to adopt this tone? After all, a formal, diplomatic tone is the norm in this profession.

Anonymous said...

To anonymous 9:30:

Rather than saying "D1 does not disclose [full recitation of claim 1]", when D1 clearly does disclose some of the features of the claim, I would rather see an applicant point out *which* feature is not in D1, preferably with a brief explanation as to why it wouldn't be obvious to add it. Bunging the whole of the claim into the "explanation" makes you wonder whether they really have found a distinctive feature, or whether they are just hoping that the examiner will take it as read tht there must be something new about it.

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