An article posted on 24 October2016 on the IP Watchdog blog caught my attention. It is by Mark Schultz and Kevin Madigan who have recently authored a report for the Center for the Protection of Intellectual Property (CPIP), The Long Wait for Innovation: The Global Patent Pendency Problem [PDF, 1MB]. Their thesis – and it is a sound one – is that the growth in numbers of patent applications throughout the world over the past decade or so is stressing the resources of many patent offices, and is resulting in a growing backlog which is resulting, in turn, in excessive pendency (i.e. the delay between filing an application and a patent actually being granted). This, say Schultz and Madigan, is a problem, because in some countries patents are taking so long to issue that, by the time they do, they may be of little value to their owners.The Long Wait looks, in particular, at the pendency of patents granted by a representative sample of 11 offices, between 2008 and 2015. The results place South Korea, China, Australia, USA and Japan in a ‘low pendency’ group (application to grant in under four years). Egypt, the European Patent Office (EPO), Argentina and India fall into a ‘medium pendency’ group (between four and eight years). Bringing up the rear, in a ‘high pendency group’ (eight to 12 years) are Brazil and Thailand.
Schultz and Madigan’s conclusion that patent offices with longer pendency are struggling, while those with the lowest pendency are doing fine, is broadly valid. However, there are a couple of limitations to their approach, as a result of which they miss some subtle – and not-so-subtle – points regarding the performance of a number of the patent offices in their study.
First, using pendency as a measure of performance is inherently backward-looking. For the offices in the ‘high pendency’ group, in particular, the applications in question were filed, on average, a decade prior to the year in which they were granted. But what does this mean for applications filed since 2005? Can they expect a similar, shorter, or longer pendency?
Second, the assumption underlying the methodology – that pendency is primarily a result of patent office delays resulting from an existing backlog of applications – is not entirely valid in relation to a number of the patent offices considered. Applicant behaviour and specific legal and regulatory provisions are also significant factors in some jurisdictions. Indeed, in Australia and Japan in particular the impact of changes in laws and/or regulations are clearly visible in the results, and dominate over patent office examination delays.
By looking at filing and grant behaviour in the 11 offices selected by Schultz and Madigan, in conjunction with their pendency data, it is possible to obtain further insights. For example:
- the Brazilian and Thai patent offices are in very serious crisis (the term ‘basket case’ would not be inappropriate) – in the absence of major intervention the pendency of applications in these offices will continue to grow (and the apparent reduction in pendency in Thailand between 2012 and 2014 appears to be an anomaly);
- although the EPO falls into the ‘medium pendency’ group, it appears to have its workload under control, and is at low risk (along with Australia, the USA, Korea and Japan) of developing a growing backlog;
- within the ‘medium pendency’ group, the Indian Patent Office appears to be at greatest risk of joining Brazil and Thailand in the ‘high pendency’ group, with every indication that the growth in pendency observed in Schultz and Madigan’s study will not just continue but, without action, accelerate; and
- China, despite falling in the ‘low pendency’ group is, on other measures, on par with Argentina, and may be starting to develop a growing backlog of applications.
Tags: Backlog, Examination, Patent analytics, Patent Office
Earlier this month, 
