Introduction
In October 2022, the Industry Patent Quality Charter (IPQC) was published aiming at improving the quality of patents.
But what does quality mean in this context?
Patent quality is a concept used by many different stakeholders, but not easily defined. There is a variety of different perspectives:
- Patent offices often think of patent quality in terms of streamlined and timely patent search and examination procedures
- Companies have their own, often different, understanding of patent quality focusing on fitness for purpose to support targeted IP strategies
- Users of IP may understand patent quality as the set of positive economic outcomes produced by the patent system
Whatever perspective one takes, one fact is certain: the granting of patents with a high chance of validity is crucial to consistent, predictable and efficient court decisions in patent lawsuits, and the good functioning of the patent system in general. The outcome of the patenting process, from proper drafting by the applicant to thorough examination by the patent offices, including the European Patent Office, should be patents with reliable validity. If this is lacking, there are serious consequences.
Such consequences are not only understood as consequences that occur within the companies concerned. Rather, the consequences would affect society as a whole. In the end, a non-functioning patent system will no longer create sufficient incentives for innovation. Therefore, innovation in important areas could decline. On the one hand, this would be harmful for Europe as a business venue, and on the other hand, it would also lead to a lack of important innovations needed to face today’s challenges, e.g., in areas such as pharmaceuticals, sustainability and the use of modern technologies.
However, the burden to improve the situation is not only on the authority’s side, e.g., by again improving the search and examination processes. Additionally, the users of the system must also contribute to the efficiency and the transparency of the patent system by focusing their IP generation and portfolio management on patent quality rather than quantity.
Therefore, the undersigned companies voluntarily adhered to the IPQC and thereby, declared their intention to proactively participate in improving the quality of European patents again.
Demands
In view of the decreasing quality of prior art searching and examination of the EPO, the IPQC members request improvements in the following topics:
- Complete searches
- Complete examination
- User feedback
- Training (of examiners)
- A transparent incentive system for examiners
On February 3, 2023, IPQC presented the following concrete and specific requests to the EPO.
Complete searches
The search should start with searching prior art for all claims (according to Art. 92, R. 61 EPC). Then, a draft of a commented search report raising further patentability issues (R. 62) should be formulated.
In contrast, the search should not be performed like this: raising patentability issues first, deleting critical features and search prior art only for the remaining features.
Furthermore, search criteria and strategy should be made transparent (like USPTO) and the minimal amount of hours to be allocated to search should be made transparent.
To improve quality of search, examiners should be provided with a sufficient amount of hours to come up with a comprehensive search report.
Complete examinations
The first office action should cover all decision and patentability issues (like DPMA) and not use a step-by-step approach.
It should be made transparent how much time members of examining divisions may spend for the 3-pairs-of-eye examination.
Especially, a sufficient time budget should be allocated to ensure that the 3-pairs-of-eye principle is working properly again.
A complete examination should also contain an analysis of decisions by boards of appeal and opposition divisions to identify potential shortcomings in search and examination. Then, countermeasures should be developed where possible.
User feedback
The EPO should implement an easy-to-use anonymous feedback process after each office action to continuously monitor user satisfaction (e.g., NPS or smiley approach).
Training of examiners
The EPO should implement continuous and trackable external training of examiners in latest state of the art, e.g., by research institutes, universities, or industries.
Furthermore, there should be a trackable general training of examiners, e.g., every 5 years on importance of patents in industry.
A transparent incentive system for examiners
The internal processes and resources at the EPO should be such that they motivate examiners to carry out complete searches, examinations, as well as to hold interviews and oral hearings when requested.
Moreover, this internal incentive system should be transparent.
Actions
As mentioned above, the burden to improve the current situation should not only be on the authority’s side. For this reason, the signatories of the IPQC also commit themselves to prioritise patent quality. In the opinion of the members, this can be achieved by implementing the following actions.
- Focusing on patent quality instead of patent quantity
- Regularly reviewing patent portfolios and adapting the number of existing patents to that needed to support our businesses, thus freeing up space for others in the IP system
- Ensuring proper information for the public by striving for clearly written patents with a well-defined scope of protection, avoiding misleading or inconsistent wording
- Entering into continuous constructive dialogue with the EPO since the quality of the prior art searching and examination of the EPO demonstrably declined in the last years due to an excessive focus on efficiency, timeliness and productivity
- Offering to train examiners in the latest state of the art, importance of clarity of claims and how important patents are for industry