Joff Wild

Over the past few months IAM magazine has been working with Thomson Reuters on what we hope will become an annual benchmarking survey of both in-house IP counsel and lawyers and attorneys in private practice. So far over 450 respondents have provided answers to a series of detailed questions looking at issues such as patenting, litigation and monetisation strategies, how the current downturn has affected these and how integrated each area is with overall strategies inside corporations. There are different surveys for corporates and private practice, but both basically cover the same ground.

Although the IAM/Thomson Reuters Annual IP Executive Benchmarking Survey is still a work-in-progress, there are a few interim findings that can now be shared. Among the most striking of these is what respondents have told us about the quality of patents being issued by the world's major patent offices. On the in-house side, this is what we have found:

• 70% of respondents believe EPO quality is excellent or very good.

• 56% believe USPTO quality is excellent or very good.

• 54% believe JPO quality is excellent or very good.

• 25% believe KIPO (Korea) quality is excellent or very good.

• 18% believe SIPO (China) quality is excellent or very good.

• 26% believe that issued EPO patents have improved in terms of quality over the last year; 71% believe they have stayed the same; 3% believe they have got worse.

• 23% believe that USPTO issued patents have improved in quality; 61% believe they have stayed the same; 16% believe that they have got worse.

• 17% believe that JPO issued patents have improved in quality; 78% believe they have stayed the same; 5% believe they have got worse.

• 34% believe that KIPO issued patents have improved in quality; 61% believe they have stayed the same; 5% believe they have got worse.

• 58% believe that SIPO issued patents have improved in quality; 37% believe they have stayed the same; 5% believe they have got worse.

Lawyers and attorneys in private practice responded to the same line of questioning in this way:

• 56% believe EPO quality is excellent or very good.

• 40% believe JPO quality is excellent or very good.

• 38% believe USPTO quality is excellent or very good.

• 21% believe KIPO quality is excellent or very good.

• 20% believe SIPO quality is excellent or very good.

• 29% believe the quality of EPO issued patents has improved over the last year; 64% believe that it has stayed the same; 7% believe it has got worse.

• 19% believe the quality of JPO issued patents has improved; 77% believe it has stayed the same; 4% believe it has got worse.

• 20% believe the quality of USPTO issued patents has improved; 62% believe it has stayed the same; 18% believe it has got worse.

• 30% believe the quality of KIPO issued patents has improved; 67% believe it has stayed the same; 3% believe it has got worse.

• 56% believe the quality of SIPO issued patents has improved; 42% believe it has stayed the same; 2% believe it has got worse.

Clearly, the EPO is regarded as the pace-setter among the world's leading patent offices; both the Koreans and the Chinese have improved significantly, but still have work to do. What our respondents are telling us about the USPTO, meanwhile, only goes to emphasise the job that David Kappos has in front of him. That said, it seems to me that there are still far too many people who believe that none of the offices we asked about offer high enough standards. There is room for all of them to up their game, at least as far their users are concerned.

We also asked people about what they feel are the biggest impediments to quality and, so far, the number one issue identified by in-house counsel and private practitioners is the pressure to get examinations done more quickly; both put the sheer number of applications being submitted at number two; and each selects government regulations at number three.

The total number of responses to the survey we have so far received is 468, with a pretty even split between those working inside IP-owning companies and in private practice at either law or patent and trademark attorney firms. In terms of where respondents come from, the breakdown is, on the in-house side, 40% from North America, 33% the EU, 27% the rest of the world (most of whom are from Asia and Australasia). On the attorney and law firm side, the breakdown is 27% North America, 24% EU and 40% the rest of the world (the breakdown here is weighted to Australasia and Asia, but there are a number of respondents based in both Latin America and Africa). By contrast, for IAM magazine itself there is a pretty even 40%/40% split between North America and the EU, 15% or so from Asia and 5% from the rest of the world; while around 70% of subscribers work inside IP-owning corporations, 25% or so are drawn from private practice and the remaining 5% are intermediaries, academics, VCs and other types of investor.

A second round of research is due to get underway at the beginning of November and final results should be through in January 2010. At this stage, of course, findings will be fully reported in IAM magazine. In the meantime, look out for some of the results on litigation, which I will share with you later on this week.