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Wednesday, 22 May 2013

Speedypats can be okay -- if handled with care

Will it all be plain sailing for speedypats?
Little over a month ago ("Coming soon: Speedypats", here), this Kat reported on the proposal in the United Kingdom to grant superfast national patents in just 90 days.  He expressed some anxiety as to whether this was the right thing to do in terms of both theory and practice and, speculating as to how schemes for accelerated examination were working in the US and beyond, he asked his friends at Patexia for their view.  Here, Patexia's Daniel Porter tells us what he thinks:
"Speedypat machinery

As every kat knows, grooming quality patents takes time. In recent years a glut of patent applications has left IP offices worldwide in a near-catatonic state. Here in America typical inventors expect to wait several years to get get a patent issued; a delay that many recognize as possibly undermining the goal of promoting rapid, competitive innovation. The United States Patent and Trademark Office (USPTO), like the United Kingdom Intellectual Property Office (UKIPO) and corresponding agencies elsewhere in the world, is trying hard to get its system up to scratch. These attempts have been no walk in the park for those involved and, for this reason alone, last month's UKIPO consultation considering 90-day-or-less prosecution (on which, see discussion here) piqued my curiosity.

My initial reaction ("can they really do a good job of examining a patent in 90 days?") was more disbelief than curiosity. I was surprised to find that the consultation laid out a plausible scenario and timeline for such expeditious examination. My curiosity turned instead to the effects on patent quality and the purported benefits for SMEs, the economy, and innovation. This led me to investigate the details of the proposed acceleration service more closely. What does this mean for the mechanics of search and examination to those with fur in the game? Are these speedypats really the cat's whiskers?

Approaching acceleration

Many intellectual property offices around the world already offer expedited examination. Some of these programmes succeed in reducing examination times to less than a year, but the 90-day speedypats programme is unique in its alacritous ambitions. In my estimation, the superfast program's success will depend upon even more carefully navigating many of the same issues facing existing acceleration programmes.

The two most prominent USPTO acceleration schemes are known as "prioritized examination" and "accelerated examination." Prioritized (also known as "Track One") examination is the newer of the two programs, effectively allowing 10,000 applicants to request the opportunity to pay a little extra (currently US$ 4,000 -- or US$ 2,000 for a small entity) and skip their inventions to the "front of the line." Prioritized examination doesn't mean faster examination, but instead a quicker route to get to the examination stage.
Merpel never did quite get the idea of electronic filing
Accelerated examination, on the other hand, aims to reduce examination time itself by requiring more up-front information as well as increased responsiveness from the applicant. The required "accelerated examination support document" and "pre-examination search document" burden the applicant with the task of locating prior art and to differentiate the claimed invention from earlier innovations with a high degree of specificity. Accelerated examination also requires that applicants make use of the electronic filing systems; they are restricted to a shorter turnaround for responses to office actions and must be available for a phone interview with the examiner. Prioritized examination is more expensive than accelerated examination, though paradoxically many recognize the latter (which requires substantially more preparation) as resulting in stronger, more strategic claims. Both services limit the number of claims per application.

Existing UKIPO acceleration services (reasons-based acceleration, combined search and acceleration, early publication) are in effect similar to these USPTO services. There is more than one way to skin the accelerated-examination cat, though, and notable procedural differences exist. Where the IPO typically performs the search and examination stages separately, USPTO examiners perform a prior art search in conjunction with their examination. Where the IPO publishes applications after a preliminary search, the USPTO publishes most unaccelerated applications before reaching an examiner for the first time (they categorically publish all applications 18 months after filing.) Where acceleration with the USPTO is more costly than normal filing, IPO acceleration comes at no extra charge, but may require the applicant to demonstrate a good reason.

Both offices also offer acceleration of international applications, leveraging the time and resources spent by foreign patent offices.

The UKIPO superfast acceleration seems modelled as a condensed copycat version of the combined search and examination (CSE) process. After an initial search and examination the application undergoes a first amendment and re-examination stage, followed by publication for public comment and a second amendment and re-examination stage. Superfast patents will cost up to £4,000 on top of regular application fees, will require applicants file online, and could establish tight deadlines forcing applicants to respond with cat-like reflexes.

Significant question marks remain surrounding how to guarantee thorough prior art search and public review. Solutions could include revisiting prior art search more than once throughout the application process, and even after patent grant (possibly resulting in revocation). The current standard period for public review is three months. The consultation hints that the IPO is considering a reduced timeframe, and seeks public comment on the utility of this review.

What to expect

So the cat's out of the bag. Superfast processing seems possible in practice--an extreme case of similar acceleration schemes available in the UK and elsewhere. Questions remain about overcrowding, patent validity, patent value, innovation diffusion, and the effects on economic growth. Right now, the best we can do is guess based on the information available.

The first empirical analysis of patent acceleration seems to be a recent report by the International Centre for Trade and Sustainable Development (ICTSD). Its goal was to investigate patent acceleration for environmentally helpful technologies as a climate change initiative. The report focuses on 5,000 "green" patents in seven countries. In addition to concluding that these services do in fact result in reduced examination time, the study found through citation analysis that accelerated patents were more effectively disseminated than their unaccelerated counterparts.

The study detailed several other interesting findings as well.

First, participation in acceleration programs was low, but demand still exists for this choice of service (and this demand appears highest in the UK). This highlights a common response to acceleration; that delay in the patenting process is advantageous to many entities hoping to maximize the length of their patent protection. Overcrowding won't likely become an issue. A related concern arose in a previous consultation. Some worried that inexperienced entities without representation may choose accelerated examination when it is not in their business interests. In a similar vein, the ICTSD study found that communication regarding the advantages and disadvantages of these services could improve substantially.

Finally, accelerated green patents are more valuable than their unaccelerated counterparts. This value does not likely stem from the shorter time scales, but instead from the more careful invention selection and scrutiny encouraged by many acceleration programmes.

I remain skeptical that such a short time frame for patent prosecution can guarantee effective examination and prevent the hasty issue of applications that will be invalid when examined more carefully. The IPO will need to construct with care its rules surrounding public review and prior art search, possibly requiring additional prior art search before application filing similar to the USPTO's accelerated examination. Whether superfast processing will benefit small-to-medium and the economy more generally remains unclear. But it will help some, while improving technological diffusion and reducing patent pendency, so the IPO seems wise to at least offer the choice".
Thanks, Daniel, for your survey and for your thoughts, which this Kat very much appreciates.


Anonymous said...

It seems to this anonymouse (squeeek) that the proposal is outright dangerous.

Don't the problems of publication inside the priority year far outweigh the potential benefit of speedy grant.

If an invention is worth spending the additional £4K up front isn't it also worth sitting on until any priority claiming applications have been safely filed?

Anonymous said...

And what of the danger of an incomplete search? The search documentation takes time to be up-to-date AND properly classified as well.
I will remain silent on intermediate documents......

ex-examiner said...

The recently- published IPO steering board minutes for January indicate that doubts have been expressed within the IPO as to the deliverability of the accelerated grant procedure, which it seems will only work if not many applicants want it. The IPO continues to have difficulties both in attracting staff and keeping them, and has been relying on overtime to keep its head above water with the existing case load. However, it seems that overtime working is to be discontinued on government orders, meaning that the time pressure on examiners can only increase. Quoting from teh Jan 2013 minutes:

7.9 The NEDs had a number of questions regarding the report. Would the 90 day patent fast track process rely on the goodwill of staff? In trying to meet the aspirations of customers was there a risk that the IPO would not have the staff to do it because of overtime arrangements. It was clarified that the 90 day service would be useful for some applicants but there would not be a major demand for it. Given the potential issue relating to overtime anything new would be impossible to achieve. The patent box would also impact. The inability of the IPO to grant patents quick enough would be a problem.

Anonymous said...

I think such schemes work more for the patent offices rather than applicants. In a way, such schemes shift the onus of obtaning valid patents back on the applicants. They need to exercise due diligence while furnishing prior arts (where they are required to do so. Another point is that such schemes may be used by applicants as an option where obtaining a faster grant is commercially important. Ultimately, it is the applicants who need to decide what do they want out of the system they have at their disposal.

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