Joff Wild

The benchmarking surveys of IAM's readership that we have been publishing since 2010 consistently show the European Patent Office to offer the highest quality patents and the best service to applicants among the IP5 issuing authorities. Over the same time period, the USPTO has increasingly focused on improving its output, but no initiative seems to have had much of an impact – at least among our readers. For just as the EPO secures top spot each year, so the USPTO is stuck in third, with the Japan Patent Office the perennial occupier of second position.

In order to get a better idea of why the EPO does so well and the USPTO lags behind, earlier this year we worked with Professor Colleen Chien of the Santa Clara University School of Law, and a former White House senior IP adviser, to develop a follow-up survey designed to drill deeper into our readership’s opinions of both offices. During June readers were emailed and invited to take part. We got approximately 650 responses. Below Colleen Chien summarises some of the main findings.

As the recent US Department of Commerce Watchdog report highlights, patent quality very much remains a priority issue for many. According to IAM’s 2016 benchmarking survey, the majority of surveyed patent practitioners believes that current patent quality is a problem. The USPTO’s answer to this call has been through its ambitious Enhanced Patent Quality Initiative (EPQI), now in its second year; initiatives addressing quality at the EPO, long a priority, are coordinated through its Quality Office.

This coming Friday, 9th September, Santa Clara and Duke Law Schools will convene a conference featuring EPO and USPTO current top brass Valencia Wallace-Martin, Andy Faile, John Cabeca and Alfred Spigarelli, as well as USPTO past leadership, including Dave Kappos, representatives from GAO (which recently published its own review and recommendations for improving patent quality) and prominent academics to discuss these and related developments. (You can still register the conference and find the webcast link here.)

But a common problem among all efforts to improve patent quality is the difficulty of measuring it. Patents challenged in litigation or post-grant proceedings are highly selected and non-representative and so are their corresponding rates of invalidation. Internal metrics like customer satisfaction and internal examiner ratings don’t get at the likelihood a patent will withstand scrutiny.

Comparative metrics that consider the relative performance of various offices over time can provide a partial solution by providing a way to measure, if not absolute patent quality, comparative patent quality. They allow the gaps between particular offices and benchmarks, as well trends over time, to be detected. Recent research reveals that the gap between USPTO and EPO patents in force is as much about the different choices applicants make as it is about the different ways in which examiners prosecute patents.

Since at least 2010, IAM has asked its readers about the comparative quality of patents produced and level of service received at various patent offices. Respondents have consistently reported the EPO ranks most highly in terms of quality and service, at least in their view. But what past reports have not discussed is why. What are the practices that make one patent office strong on service, or quality? What are the strengths, and what are the weaknesses, of different offices? What should be the priorities of policymakers as they tackle quality concerns head on? In a follow- up survey of about 650 practitioners with USPTO and EPO experience that IAM and Santa Clara Law conducted earlier this year, we asked survey-takers their opinions.

Below we highlight some of the most salient findings, with additional detail to be provided in a forthcoming article. We hope that these opinions, though not necessarily representative of all with relevant experience, are useful for seeding discussion at the upcoming Santa Clara - Duke patent law conference:

1. Ensuring Consistency should be the USPTO’s Top Priority.

What comes across in the answers to several of the questions -  one about the most urgent priorities with respect to patent quality (Figure 1 below) and another about the relative performance of the USPTO vs. the EPO (Figure 2 below) - is that consistency across examiners is a high priority area among survey respondents. Individual comments detailed the variable treatment that they received from examiners and art units even within particular cases, with prior art often being revealed in stages, rather than comprehensively, at the beginning. The comments acknowledged that some of the lack of consistency was also due to the pace of change within the patent system and the need to constantly train and retrain examiners in light of the evolving case law.

2.  Among Existing Initiatives, Search and Training and Prosecution Are Priorities.

The USPTO’s quality initiative is targeted along the entire life cycle of a patent application - from the initial application search to post-grant phase. We asked respondents which, among existing USPTO initiatives, deserved the most attention. Those at the front end of the patent process - including search and training initiatives such as automated search, awareness of the Science and Technical Information Centre, and training to improve clarity and reasoning of office actions, as well as prosecution focused interventions, including clarity of the record initiatives and interview specialists - received the most votes. Within the comments there was a sense that front-end investment in quality would reduce the need for back-end quality adjustments through post-grant review. However, it’s important to keep in mind that, given that relatively few numbers of patents are subject to review, high invalidation rates, even in the “highest quality” EPO jurisdiction are the norm.

3. The EPO is perceived to be better with respect to consistency, predictability and adequacy of examination’ including NPL citation; the USPTO gets better marks for timeliness and cost.

Finally, the results reveal where the differences are greatest, as well as smallest, between the EPO and USPTO with respect to various aspects of patent quality (see Figure 2 below). The survey asked respondents to rate each office among a variety of dimensions of patent quality. We averaged the results and then compared the USPTO and EPO averages. The EPO’s scores were better than the USPTO’s in areas with positive values and PTO did better than the EPO in the areas where there were negative differences. Notably, the scores (on a five point scale) were fairly close. In no dimension did any office outshine the other by more than 1 full point. Second, the areas in which the USPTO, according to respondents, should focus, are areas in which the EPO, not surprisingly, rates better than the USPTO. Third, the USPTO is preferred to the EPO on several measures including timeliness and cost. The extent to which these impressions align with reality, and can encourage cross-pollination of best practices will be explored at next week’s conference; and in subsequent reporting in IAM magazine.