How the World’s leading Patent Offices and Patent Owners are driving changes in patent prosecution
The Patent Law Treaty, an international agreement to ensure harmonization of procedures and requirements for national and regional phase patent applications, came into force over a dozen years ago. However, the agreement is in force only in 39 countries. Barring the United States of America, four of the top five patent jurisdictions - China, Japan, Korea, and the European Patent Office - are either not parties to the agreement or yet to ratify the agreement. International patent law harmonization remains an elusive goal.
Notwithstanding the absence of a robust international framework, the world’s leading patent offices (commonly known as the IP5) and leading patent filers have forged a strong alliance to push for efficiencies and positive changes in global patent prosecution. Slowly, but surely, there is increased cooperation among patent offices the world over to “improve the quality, efficiency, and predictability of patent family prosecution.” Specifically, the Patent Prosecution Highway, Common Citation Document, and Global Dossier programs have had a significant impact in reducing pendency times as well as costs in prosecuting patent applications belonging to the same family.
The Patent Prosecution Highway (PPH) program, since its inception over a decade ago, has become one of the most effective work-sharing initiatives. Over 30 patent offices, including most of the top 10 IP jurisdictions, have signed bi-lateral or multi-lateral agreements wherein work products of one patent office (the office of first/earlier examination) may be used to expedite or accelerate examination in the other patent offices (office of subsequent/later examination) under the PPH agreement. A significant feature of the PPH program is that while search and examination reports are shared and reused among the member offices, the ultimate decision on whether to grant a patent rests with the national or regional offices according to their respective local laws and jurisprudence. The Office of International Patent Cooperation (OIPC) estimates that over 75% of patent applications require less than 3 examiner actions to complete prosecution under the PPH program. On the other hand, 4 or more examiner actions would have been required to dispose the same fraction of applications under a non-PPH route. The Canadian Intellectual Property Office reported that 92% of applications under PPH received a first office action (allowance or first substantive examination report) within 3 months of receiving a request compliant under the PPH guidelines. The USPTO filing statistics show that the allowance rates for applications under the PPH program is 83% as opposed to 66% for non-PPH applications with an average reduction of about 30% in the number of actions to disposal. The attendant cost benefits are estimated to be between US$1700 to over US$2800 per application depending on the complexity of the response/application. The cost savings are higher when the reductions in the number of RCEs, appeals, etc., are factored.
The Common Citation Document (CCD) portal offers a consolidated single window for “the prior art cited by all participating offices [over thirty to date] for the family members of a patent application, thus enabling the search results for the same invention produced by several offices to be viewed on a single page.” The CCD database can be accessed through the dedicated CCD portal or through the European Patent Office’s ESPACENET portal. Patent Examiners, Patent Owners and Applicants, as well as interested parties can use the CCD database in a multitude of ways to make informed decisions on search, examination, filing, and go-to market strategies, among others.
The Global Dossier program is the latest initiative of the IP5 offices in conjunction with an industry stakeholder group known as the IP5 Industry. Launched in 2014, the global dossier public portal provides file wrapper information of patent application families in a single location for ready access by examiners and others users alike. The Global Dossier leverages an IP5 Office internal initiative known as the One Portal Dossier (OPD) for examiners to securely share file dossier information amongst themselves for enhancing work-sharing benefits in search and examination. Furthermore, the OPD database is now linked with the WIPO Centralized Access to Search and Examination (WIPO CASE) system. The linkage allows patent offices across the world to securely share search and examination results, thereby increasing efficiency and quality of patent office work products. Efforts are underway to create an active document submission portal as part of the Global Dossier initiative for submission of administrative documents such as powers of attorney and applicant related information, among others.
The initiatives highlighted above are significant when one considers the patent filing and prosecution activity in the IP5 offices. Over 2 million patent applications were filed (at an impressive growth rate of 9.4% year-over-year) and 1.1 million patents were granted by the IP5 offices in 2016. These harmonization initiatives are driving global prosecution costs and pendency times to historically low levels. How do these initiatives impact the way patent prosecution is managed by traditional service providers? Is this the beginning of the end of the traditional model of hourly billing; siloed prosecution at national level; and, reciprocity arrangements? Is this, taking on the words of Richard Susskind, the end of patent prosecutors?
Stay tuned for our next “insight” on reengineering the traditional patent prosecution model by leveraging technology – from robotic process automation to machine learning and artificial intelligence!