Decoding patent examination services

ABSTRACT

This paper puts forward a new methodology to characterize and compare the examination practice of patent offices. The methodology codifies public information into a typology of chronological key examiner actions. This approach translates into a quantitative characterization of search completeness (i.e. classification and citation practices), certainty, speed and stringency, or grant rate. The methodology is tested on a sample of 100 random families of a non-controversial field, comprising EPO, JPO and USPTO members. The results show profound differences across offices in respect to search completeness, certainty and speed, and indicate heterogeneous levels of stringency.

KEYWORDS:

• Patent systems
• patent quality
• comparative analysis
• intellectual property

Disclosure statement

No potential conflict of interest was reported by the author(s).

Notes

1 Policymakers and patent offices in particular have made strong efforts in cooperation and harmonization, as witnessed by the development of the European patent system and the Patent Cooperation Treaty (PCT) and the formalization of the IP-5, as a discussion platform for the five large World IP Offices (Europe, Japan, United States, Korea and China, see https://www.fiveipoffices.org/index.html). In addition, patent offices have massively increased the transparency of their examination services, for example with the on-line publication of procedural information, allowing applicants and patent professionals to consult application file wrappers in an almost just-in-time manner.

2 For example, biotechnology, computer implemented inventions and methods to treat the human body could introduce significant distortions in patent examination metrics, alien to the patent procedure as such.

3 Claessens and Laeven (2003) is one example – amongst hundreds – which relies on the Ginarte and Park index to assess the impact of patent systems on innovation or growth.

4 These indicators affecting stringency and transparency include the publication of a search report (transparency), the grace period, the budget per examiner, the average working experience of examiners, the easiness to modify the scope of protection and the workload per examiner. For instance, van Pottelsberghe assumes that a heavy workload would reduce the quality of the examination process. This assumption has recently been empirically validated by Kim and Oh (2017) for the Korean Patent Office (KIPO).

5 The option of simultaneously filing identical patent applications in different offices at exactly the same date and by different attorneys is theoretically available as well, but impractical and very expensive.

6 The IPC consists of eight main language-independent groups (A–H) corresponding to different areas of technology. It is further subdivided into about 70,000 classes. The finer the division is, the more digits it comprises (i.e. C corresponds to chemistry, whereas C21B corresponds to steel production and C21B5/00 to steel production in blast furnaces. Although several indigenous classification systems exist, they are often based on the IPC. This is the case for the former European Classification System (ECLA), the Japanese Classification System (FICLA) and the Cooperative Patent Classification System (CPC) that is becoming the modern international standard. One exception to this rule is the former United States Patent Classification (USPC), which was not IPC based.

7 Lazaridis and van Pottelsberghe de la Potterie (2007) reach the conclusion that in the EPO 30% of applications are withdrawn by applicants after receipt of the Search Report and citations to the state of the art, without a formal ‘refusal’. This would not occur in the USA, where all patents are searched and examined automatically, there is no intermediate search report.

8 Depending on the office, different terminologies than ‘withdrawal’ can be used such as abandonment, dismissal or rejection.

9 The division of a parent application is an accepted practice in most patent offices. When an application does not meet a number of formal requirements (e.g. unity) or at the volition of the applicant, it can be divided into a number of subsequent “divisions” that share the same filing date as the original filing and that may not extend beyond its scope (see, e.g. EPO GL A-IV 1, JP-PL, Art. 44(1) and US MPEP 201.6). In the present methodology, divisional applications from EPO, JPO and US-PTO (and continuation applications from US-PTO) are treated as individual, separate applications. If an EPO patent filing for example is divided into two divisional filings and one is granted, we compute a grant rate of 50% for the EPO family member. The logic is simple: the two divisions must add at most to the scope of the parent (not more), so in case one part of the two is granted the grant rate for that family member is 50%. The same applies to continuation applications for US-PTO, as the application is identical with only added claims that may be the subject of an additional grant. Continuation in Part applications are only possible in the US patent system and have not been considered in the present population.

10 As discussed in footnote 5, the number of digits of the IPC class defines the narrowness of the technical field considered. In principle any arbitrary number of digits could be used here, as long as it is applied equally to all offices. 4 digits have been used as it is the minimum International Standard for a Subclass Symbol, that roughly defines what is considered as a technical field in engineering terms (see http://www.wipo.int/export/sites/www/classifications/ipc/en/guide/guide_ipc.pdf)

11 Other less common types of citations need not be detailed here, for example so-called intermediate P and E citations, which filed prior to but published after the filing or publication date of the patent application in suit. The same applies to the rare general technical field citations such as O and T types.

12 In the present case, the so-called simple DOC-DB family definition has been used. This corresponds to patent applications sharing their priority filings, i.e. claiming priority from the same patent applications. The fact that the family is defined by members claiming priority from the same applications, implies that the filings treated by each of EPO, JPO and USPTO in the present work represent the same or very similar technical subject-matter.

13 As discussed in the previous section, the PCT procedure comprises a number of provisions that strictly regulate its chronology of events and search practice. Therefore, in order to identify potential biases linked to the high share of PCT procedures treated by the EPO as ISA reflected in Dataset I a second Dataset II was created with a random selection of procedures and the added condition that the share of PCT-ISA applications is balanced across offices. For both Dataset I and II the PCT-ISA share of the whole sample is 66% but in Dataset II all offices have an equal share of applications treated as PCT-ISA of 22%. Dataset II did not introduce any statistically significant changes.

14 Databases used in the data extraction: the Common Citation Document of the world's biggest five patent offices (United states of America, Chinese Patent Office, Japanese Patent Office, European Patent Office and Korean Patent Office, so-called IP-5, http://ccd.fiveipoffices.org/CCD-2.1.6/), the Global Dossier (accessible through various patent offices), the Worldwide Patent Statistical Database PATSTAT (https://www.epo.org/searching-for-patents/business/patstat.html#tab1), the Japanese Patent Platform (https://www.j-platpat.inpit.go.jp/web/all/top/BTmTopEnglishPage), the USPTO pair access (https://portal.uspto.gov/pair/PublicPair) and Espacenet by the EPO (www.espacenet.com).

15 The fact that EPO processes a significant amount of PCT actions (followed by JPO and with US-PTO a distant third) may impact the time to 1st citation index. Recent efforts in the Early Certainty for Search initiative may have further improved the time to first citations by EPO.

16 This count excludes the final notices of allowance and formal communications, which are considered in all cases informative letters, rather than substantive communications.

17 The categorization of citations was also considered in the present paper and extracted manually for US-PTO procedures directly from the Office Actions wrappers. EPO and US-PTO cite respectively 85% and 86% of citations as objecting patentability for the given population and JPO 75%.