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Are patents going to become harder to get?

Many people presume that in the age of the global village patents are international. The fact that PCT applications are referred to as “international applications” contributes to this common misconception.

Those of us that represent patent Applicants are painfully aware of the fact that the procedure for obtaining a granted patent is a country by country proposition with all of the attendant fees, laws, regulations and bureaucracy.

Even the International (PCT) stage of examination can have different results depending on which International Search Authority (ISA) the Applicant selects for their PCT application.

Results differ because each ISA has a tendency to search for references in its own primary language.

For example, The United States Patent and Trademark Office (USPTO) looks primarily for English language references, most often US patents or published US applications. The European Patent Office (EPO) is nominally comfortable citing references in English, French, or German, which means they most often cite US or EPO references, with an occasional French patent or German patent or UK patent finding its way into their search results. The Chinese Intellectual Property Office (SIPO), Japanese Patent Office (JPO) and Korean Intellectual Property Office (KIPO) each tend to focus primarily on references in their own language (including PCT applications in the relevant language). The five patent offices together are referred to as the IP5.

The net result is that different ISAs within the IP5 cite different references because they are searching different databases.

Until recently, English was king in the world of patents. More recently, the Chinese government has made patenting a national priority. As a result, the number of applications filed in China each year is greater than any of the other IP5 offices.  According to WIPO (World Intellectual Property Organization) in 2016, the USPTO received 0.52 million new patent applications and the SIPO received 1.26 million new patent applications. In the same year, the JPO received 0.46 million new patent applications and the KIPO received 0.23 million new patent applications. EPO statistics indicate about 0.3 million patents were filed there in the same year.

This means in 2016 there were 0.8 million applications filed in western languages (USPTO + EPO) and 1.96 million applications filed in Asian languages (SIPO+JPO+KIPO). In other words, only about 30% of new applications are in western languages.

This means that the USPTO and EPO, by searching primarily, if not exclusively, in western language databases in their role as ISA are ignoring a significant proportion of relevant references when they examine a PCT application for patentability.

As a result, many western Applicants are surprised by Asian language references discovered for the first time during national stage examination in China and/or Korea and/or Japan. Conversely many Asian Applicants are surprised by western language references discovered for the first time during national stage examination in the USPTOand/or the EPO.

In order to address this issue the IP5 have instituted a pilot program called “IP5 PCT Collaborative Search & Examination” (abbreviated as CSE). According to this program, an Applicant selects one of the IP5 offices as a main ISA. The main ISA performs a search and prepares a draft  international search report (ISR) and written opinion (WO). The draft ISR/WO and a record of the search is  shared with the other four offices  in the IP5 (peer offices).

The peer offices review the draft ISR/WO, perform additional searching as deemed necessary, and provide comments back to the main ISA. The main ISA then prepares the final ISR/WO, taking into account the peer contributions.

The following process model provided by WIPO presents the procedure schematically:

Note that at this stage participation in the CSE program is purely voluntary and you need to file a request to be included.

However, if the CSE program becomes standard, PCT applications will routinely be exposed to more references, in more languages, at the international stage. That would almost certainly make patents harder to get in specific countries during the national stage.

Alternatively, routine exposure of PCT applications to more references, in more languages, at the international stage could lead to granting of narrower claims, which consider the prior art, in the national stage. These narrower claims would presumably fare better during opposition, inter partes review and infringement litigation.


Is it better to work with a solo practitioner or a law firm?

A potential client asked me the other day if his company’s interests would be better served by working with a solo practitioner legal representative like me, or with a larger firm to prepare and file a patent application.  There are advantages and disadvantages to each. If you are considering filing a patent application, consider these factors before choosing a representative. Look for advantages that are relevant to you in the present, or near future. De-emphasize disadvantages that are likely to only be relevant in the distant future.

Solo practitioner advantages

The person you speak to during your first meeting is the person that you will be working with throughout preparation and filing of the application and responses to examination reports. If there are additional applications, the same person will be handling those, and will be able to place them in context relative to the earlier application(s).

You often get more value for money working with a solo practitioner than working with a larger firm. There are two reasons for this.

The main reason you get more value for money is that overhead costs for a solo practitioner are typically lower. The money you pay is going primarily for professional services, and not to support a large staff and extensive office space. Having worked in large offices I know that only 35% to 50% of money billed to a client for professional services goes to the person that did the professional work.  As a result, the professional in a large firm is under pressure to generate sufficient billings to pay their own salary. It was a big relief to set up my own practice and have the luxury of devoting two or three times more hours to each task. Note that the billing from the solo practitioner is not necessarily lower, but the quality of the work product is potentially much greater.

The subsidiary reason you get more value for money is that your application makes up a larger proportion of the total workload in a solo practice, than in a large office. That means each task “feels” more important to the person doing it. This subsidiary reason complements the main reason to virtually insure you get more value for money working with a solo practitioner than working with a larger firm.

Large firm advantages

Larger firms can offer a wider variety of services. For example, a large firm may have separate departments for preparing patent applications (and responding to examination reports), litigation, licensing and opinions. Depending on where your company is in terms of business development, you may not need help with licensing for many years. Most firms would like to avoid litigation altogether for as long as possible, and many succeed in doing so. Consider how many of the departments at a large firm you really need.

Large firm disadvantages

Many larger firms like to bill for even the smallest of tasks, It is easy for them to do this because a half to two thirds of the money you pay them goes to overhead cost that pay for a clerical staff among other things. A client once came to me with a case that had originated at Firm X. I asked why he was transferring from Firm X.  The reply: “I didn’t mind being billed 500$ for a paper clip, but I was never really sure that I got the paperclip.” Small charges like per charge pages for photocopying and FAX transmissions can add up over time.

Many larger firms require multiple rounds of review by different people. In theory this is an advantage. In practice, if you are billed by the hour for each review, it detracts from the value for money. This is especially true if an unreasonably large number of rounds of review are implemented.

Overhead costs for a large firm are a big concern.  If the receptionist that greets you, invites you to sit in a 5000$ leather sofa and offers you a choice of beverages that puts Starbucks to shame  has a 200$ hairstyle and a 60$ manicure, you should wonder how the money you spend in that office is being used.

Many larger firms will have a partner attend the initial meeting. Is that partner the person t5hat will actually be writing your application? Has that partner written any applications in the last year? Five years? Who will actually be doing your work? Are they at the initial meeting? How much experience do they have?

Solo practitioner disadvantages

 One person does it all. If they are not qualified, this is a disadvantage. Ask yourself what impression that person made on you at an initial meeting. Did they ask relevant questions? Did they take time to make sure you understand the patent process from an administrative and financial perspective? Did they ask about your business development plans, without regard to the proposed patent application. This disadvantage may be minor, or major. Think carefully and give it the appropriate weight when choosing a representative.

If you think a solo practitioner might be right for you lets talk about whether I might be the right choice. Contact me to set up an initial consultation without cost or obligation.