Joff Wild

Is there any more controversial subject in IP at the moment than patent quality? I doubt it. Many people claim that patent quality is on the decline. This leads, they say, to the grant of more dubious patents than ever before, so putting the future of innovation at risk in many technological areas.

Poor quality patents, we are told, make companies afraid to invest in R&D, have a direct impact on competition, harm consumers and society in general, and put innovative operations out of business.

But what do we actually mean by patent quality? Can it be defined? Has anybody ever tried? What’s more, is it really the case that more dubious patents are being issued then ever before?

At IAM we do not have the answers to these questions, but we know a few people who might. So we decided to ask them. Reporter Sara-Jayne Adams contacted a range of stakeholders in the international patent system – rights owners, consultants, intermediaries, patent office chiefs, judges – and posed each of them five questions:

• How would you define a quality patent?

• Is it possible to objectively measure the quality of a patent?

• Would you say the quality of patents being awarded today is of a higher or lower standard than it was say five or 10 years ago?

• Do you expect the quality of patents granted to improve in the coming five to 10 years?

• Why is patent quality an important issue?

She then collated their answers and we published them in the last issue of the magazine.

You can see the full article by clicking here. But below are a few excerpts:

In spite of anecdotal evidence to the contrary, there is no hard empirical evidence that patent quality has substantially deteriorated in the last five or 10 years. Frequently cited indicators such as opposition or revocation rates have to be treated with great caution as they do not provide statistically sound data. With regard to the timeliness characteristic of quality, which is not covered by legislation, there has been deterioration. Alison Brimelow, President of the European Patent Office

A major concern we have at the USPTO - and it is a concern I have heard from many IP offices around the world - is the room for improvement in applications coming through our door. There has been a dramatic decrease in the allowance rate, or the percentage of patent applications that ultimately get approved. Our allowance rate has dropped from 72% in 2000, to 44% in the first quarter this year. This is due partly to our quality initiatives, but much is due to the lack of quality in many applications we receive. Jon Dudas, Director of the USPTO

I would say that the quality of patents in Japan and Europe has been relatively constant, or slightly improved, over the past decade. This is due to higher patentability standards and greater time being spent on each case relative to five or 10 years ago, as well as more access to digital tools to facilitate basic processes such as prior art searching. The US was headed in the other direction over the past five or more years due to relaxed application of the standards of patentability. However, thanks to the KSR decision, we expect a rather sharp correction/improvement of patent quality in the US. Carl Horton, Chief IP Counsel, General Electric

I predict that we will see significant improvement in the quality of patents granted in the coming years. Thanks to the initiatives such the trilateral PTO talks, significant steps towards harmonisation are being taken. Not only are there moves to harmonise laws and rules in different countries, but also to create more consistent and compatible examination practices. Masanobu Katoh, Corporate Vice President, and President, Law & IP Unit, Fujitsu

With respect to Europe, the patent quality has continuously been improving since the establishment of the EPO. Whereas, leaving aside software and business method patents, we believe that the overall quality of US patents being awarded today is approximately the same as it was five or 10 years ago. Lars Kellberg, Corporate VP and Head of Corporate Patents, and Reza Green, Chief Patent Counsel, Novo Nordisk

It seems to me that the quality of patents awarded today is mixed. The standard of those issued for established art units, where the search and examination requirements are well worked out, is fairly high. Newer areas of technology – such as software and business method patents, in which the requirements for patentability and the ability to conduct a thorough search is difficult – yield more variable results. A lack of adequate examination time is another reason for variable patent quality. In the United States, patent examiners are urged to give only one non-final office action before providing their final decision. This often does not allow for a meaningful dialogue between patent office and patentee. Sometimes this is not enough time to understand the invention or the relationship of the prior art to the claims, resulting in mistakes. Sherry M Knowles, Senior VP Corporate IP, GlaxoSmithKline

The purpose of a system of patents is to serve the public interest in advances in science and technology, as manifested in the products of technology-based industry. Patent quality is measured by the effectiveness of the patent in contributing to the economic incentive to develop and commercialise advances in science or technology, with the resultant public benefit of new products, new industry, and new opportunities, all tending to national economic growth. A patent that is vulnerable because of legal or technical flaws, or a patent that can readily be circumvented, is of diminished quality, no matter how elegant its technical content. And a patent system that is uncertain, or a patent law that is unpredictable, place a burden on innovation for which there is no balancing benefit. In turn, clear and objective standards for the grant and enforcement of patents are essential. Pauline Newman, Judge of the United States Court of Appeals for the Federal Circuit

IBM believes that patent quality has suffered in recent years, as patent offices have been overwhelmed with an expanded scope of patentable subject matter, and an increasing volume of ambiguously worded applications. Overly broad patents for ideas without merit lead to speculation and litigation that diverts resources from research and development, stifles real innovation, and increases prices.  Manny W Schecter, Associate General Counsel IP Law, and Marian Underweiser, IP Law Counsel IP Law Strategy & Policy, IBM Corporation

There is a worrying trend of applicants attempting to cover much more than the invention in their patent application. I would prefer to see specifications that are more to the point, and of course examiners that react and object to vague language.

Furthermore, it appears to me that requirements for inventive step have been lowered. An application put in the right language and the right format may proceed to grant without the invention having made sufficient contribution to the state of the art to merit the grant of the patent. A combination of low inventive step, unclear description and vague claim definition provides for low patent quality, at the cost of all involved. Margareta Ydreskog, Group Patent Manager, Corporate Strategy and Business Development, Saab