Wednesday, 26 August 2015

Patent examination: more private sector involvement, but so far it's just talk ...

This morning the Japanese Ministry of Economy, Trade and Industry tweeted a media release with the somewhat inelegant but descriptively accurate title "JPO Reached an Agreement with IPOS to Start an Examination Capability Enhancement Program in collaboration with the Private Sector". The news is that the Japanese and Singaporean Patent Offices -- which have already piloted a Patent Prosecution Highway programme together -- have taken an even bigger step towards improving the examination of patent applications: the two offices are to work with their own customers, the companies that use their services.

Agreement to start an Examination Capability Enhancement Program in collaboration with the Private Sector was reached by the two offices yesterday, apparently triggered by the fact that IPOS, the Singapore office, will be the first ASEAN IP office to start full operations as an International Searching Authority (ISA) and International Preliminary Examining Authority (IPEA) for international applications under the Patent Cooperation Treaty (PCT) this September.

The reality is not as quite as exciting as the prospect of in-house counsel sitting down with patent examiners and deciding which applications to accept, which claims to reject and so on.  Rather, the two offices plan to enhance their PCT examination capability by jointly conducting "dialogues on international search/international preliminary examination with PCT users including Japanese companies".  Any sign that patent-examining authorities are willing to discuss their work and methodology with business is however welcome and, the better each side appreciates the concerns of the other, the less room there is for misunderstandings and the greater the chance that better patents will be granted.

At present, prospects for users of the patent system to engage more closely with the bodies that administer it are limited and there is little sign that, apart from ad-hoc or institutionalised consultation, user participation will increase.  The integration of third parties at an early stage of the examination process through the imaginative Peer to Patent project* (home page here, Wikipedia entry with references to critiques here) seems to have stalled despite some initially encouraging results and it is not clear why this experiment has not been taken to the next level.


* For the unfamiliar, Peer to Patent describes itself as
" ... a historic initiative by the United States Patent and Trademark Office (USPTO) that opens the patent examination process to public participation for the first time. Peer to Patent is an online system that aims to improve the quality of issued patents by enabling the public to supply the USPTO with information relevant to assessing the claims of pending patent applications. This pilot project connects an open network for community input to the legal decision-making process. The community supplies information and research based on its expertise. The patent examiner makes the final determination on the basis of legal standards. This process combines the democracy of open participation with the legitimacy and effectiveness of administrative decision making".
Sponsors of Peer to Patent include ORoPO backers IBM and Microsoft, as well as Red Hat, HP, GE, Article One and the Open Invention Network.

1 comment:

  1. I can't see why there's a need for Peer to Patent if third parties can already communicate comments to the granting office, as happens in many jurisdictions. What are its advantages?