08 July 2012

Hate Bad Patents? You Could Try Being More Observant!

Big eyesIt is widely believed that there are a lot of ‘bad patents’ around – ones that the examiner should have rejected, if only the search had turned up the most relevant prior art.

There is certainly some truth to this belief.  Examiners in all patent offices are only human, they have limited time to examine each application which comes before them, and the searching tools available to them are imperfect.  Indeed, there is no such thing as a perfect search, because the world’s stores of public knowledge are just not fully available in a readily searchable form.

In this context, crowdsourcing of patent searching makes a great deal of sense.  Patent laws and regulations are increasingly making provision for ‘third parties’ (i.e. people who are neither the applicant, nor the examiner) to submit information that may be pertinent to the validity of claims in filed patent applications.  For example, under provisions of the America Invents Act, an expanded third party submission program will commence on 16 September 2012.

The latest passenger on the bandwagon is the World Intellectual Property Organisation (WIPO), which from 2 July 2012 is accepting ‘third party observations’ on pending international applications (IAs) filed under the Patent Cooperation Treaty (PCT).

HOW DOES THE WIPO SYSTEM WORK?

A new Part 8 to the Administrative Instructions Under the PCT [PDF, 900 kB], in-force from 1 July 2012, defines the operation of the new PCT Third Party Observation system.

In a nutshell, it is an electronic system (i.e. submissions may be made online) with the following key characteristics:
  1. provides a third party with the option to remain anonymous;
  2. allows observations to include a brief explanation of the relevance of each prior art document referred to in the observation and to include a copy of the prior art document;
  3. may limit the number of prior art documents which may be referred to in one observation; and
  4. may limit the number of observations permitted to be made in relation to one international application, per third party and in total.
To comply with the system, all third party observations must:
  1. be submitted to the through the designated online system;
  2. be submitted after the date of international publication and before the date which is 28 months from the priority date of the international application in question;
  3. be in one of the allowable languages of publication, with the exception that copies of submitted prior art documents may be in any language; and
  4. refer to prior art and address only questions of novelty and/or inventive step of the invention claimed in the international application.
The electronic submission system is already up and running, as part of WIPO’s ePCT online system, and can be easily accessed via the PATENTSCOPE search system, as explained in a recent WIPO notification.  Limits have been imposed such that a person may make only one observation on a particular IA, and no more than ten observations may be made in total on each IA.  While these limits are potentially open to abuse, the Administrative Instructions also provide for observations to be rejected if the International Bureau believes that they constitute an abuse of the system.

The Administrative Instructions provide that third party observations must be promptly made available for public inspection.  However, copies of prior art documents uploaded through the system will be made available only to the applicant, competent International Authorities and designated Offices (presumably for copyright reasons).

Applicants will be notified when the first third party observation is received in relation to an international application.  However, if subsequent observations are received on the same application, the applicant will only receive notification of all further observations after the expiration of 28 months from the priority date.

The applicant may, at any time within 30 months from the priority date, submit comments in response to third party observations.  The comments will also be made available for public inspection.

The third party observations, and any applicant comments in response, will also be communicated to:
  1. the International Search Authority (if the International Search Report has not yet been established);
  2. the International Preliminary Examination Authority (if the International Preliminary Report on Patentability has not yet been established); and
  3. the national patent offices designated in the application.

HOW WILL EXAMINERS USE THIRD PARTY OBSERVATIONS?

An addendum to the PCT International Search and Preliminary Examination Guidelines [PDF, 280 kB] sets out how third party observations will be employed during search and examination of international applications.

Generally speaking, any prior art referred to in a third party observation will be considered for inclusion in a search report, or a written opinion, as if it had been found by the examiner as part of the search, provided that a copy of the prior art is included or is otherwise immediately available to the examiner.  However, the examiner will make an independent assessment of the relevance of the prior art, and is only required to include it if it is sufficiently relevant.

There is no obligation for national examiners to take observations, or the applicant’s comments in response, into account during national examination.  However, it seems reasonable to assume that no examiner would wilfully ignore a highly relevant prior art document, or fail to use any information to hand in order to reduce the amount of work involved in conducting a search and examination of a national application.

It seems likely that those countries, such as Australia, Europe and (soon) the US, which have provisions in the national/regional laws and regulations for third party observations, will treat observations filed during the international stage in the same way as if they had been filed under the equivalent national programs.

WHO WILL USE THE SYSTEM?

While the ability for any third party to submit relevant prior art and other observations on a patent application – anonymously, if desired – has the potential for positive effect on patent quality, there are difficulties inherent in having the general populace contribute to crowdsourcing of patent searches.

Firstly, there is the problem of identifying applications that would benefit from input from the public.  Voluntary participation by applicants in projects such as the Peer-to-Patent trials is unlikely to result in widespread identification of potentially ‘bad’ patents.  There is a need for a mechanism which provides interested people with easier access to details of pending patent applications within their areas of expertise.

Additionally, no matter how intelligent, educated and technically proficient a person may be, patent law is an area of high specialisation in itself.  While a patent specification may describe a particular product or technology fairly broadly – leading to the impression that the applicant may be trying to claim rights over something which already exists – the patent claims typically define some specific (and allegedly new) part of the whole.  To identify relevant prior art, it is necessary to understand not only what is being described, but more particularly what is being claimed as the invention.  Potential prior art contributors would therefore benefit from a course in claim construction which is, unfortunately, nowhere near as straightforward as it perhaps ought to be!

As matters stand, then, the main use of the third party observation system is likely to be by companies which are keeping an eye on the patent applications of their competitors.  And while this is a useful contribution to improving the quality of granted patents, it does not address the majority of applications, which are filed by individuals and small companies that may not be on anybody’s radar… until after a patent is granted, and a law suit threatened!

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