Reimagining the patent grant process

Across many jurisdictions, it takes between three and four years for a patent to be granted, in most cases. The process involves several interdependent proceedings, statutory timelines and legal requirements. However, the lack of predictability around the time taken to secure the grant will affect decisions regarding the patent’s assetisation and commercialisation and can affect an industry’s business, technology and economic landscape. It can compromise the market differentiation of assets, products and platforms that are backed by patent rights and, if it persists, can even diminish inventors’ interests in pursuing such rights. In the digital age, a reimagined approach is needed to accelerate this process.

The claim for patent rights is driven by inventors’ motivation to ascertain ownership, reap commercial rewards and translate the value of intellectual property into a benefit for society. In the value chain of IP creation to commercialisation, securing ownership is crucial for enforcing IP rights. Obtaining patent grants within a predictable timeframe helps applicants to overcome uncertainties in the patent prosecution process. Moreover, it can improve an inventor’s ability to make confident and timely business decisions.

Industry 4.0 – a sub-set of the fourth industrial revolution – demands the reinvention of processes and methodologies that can shape the future of business. There is a genuine need to continually analyse existing policies, processes, technologies, capacities and cross-jurisdiction collaborations in order to bring about effective change and simplify the grant process, the automation of manual activities and the harmonisation of cross-jurisdiction dependency.

Tata Consultancy Services has developed an IP management framework to support and facilitate the management of intellectual property by enterprises that are embracing Industry 4.0. This framework, termed ‘IP 4.0’, has been built to enable companies to create, protect and exploit their intellectual property amid the abundant, borderless innovation opportunities that have emerged in recent years.

Applying IP 4.0 to patent offices

The patent grant process depends on the quality and volume of data to be processed, the number of stakeholders and the exchange of data from a variety of sources and systems. It requires patent offices to cooperate, transfer, integrate and secure information seamlessly for the benefit of inventors around the globe.
We live in a hyperconnected world where high-speed data transfers, the universal accessibility of information, intelligent systems and AI-enabled automation have transformed the availability and delivery of information to end users. It is therefore an opportune time to leverage these capabilities.

The fundamental principles of IP 4.0 are adaptability, agility, consumability, sustainability, predictability and trustworthiness. International patent offices must sync with the Industry 4.0 principles of interoperability, technical assistance, decentralised decision making, virtualisation, real-time capability, the Internet of Services, modularity and agility. Table 1 shows the scope and impact of IP 4.0 on patent offices and how it would influence key outputs in the patent grant process.

Analysing the output, outcome and beneficiary of the patent grant process

The advent of e-filings has improved the administrative efficiency of the patent-filing process. But after filing, an applicant is expected to wait 18 months from publication for the next course of action (office action). While applicants can file in multiple countries to protect their inventions, if patent offices join a single platform like the Patent Prosecution Highway (PPH), this helps to reduce processing times and facilitate the early publication of applications. Expedited examination is also available for select types of applicant to ensure early publication, on payment of additional fees. Technological interventions could help to democratise this process by allowing applicants to converse with examiners around the world, accelerating the publication process and facilitating faster decision making.

Examination capacity is a key limiting factor here. Prior art searches to assess the novelty and inventive step of an application are an important prerequisite for issuing the first office action. But the workloads of examiners who conduct these searches are mounting due to rising numbers of applications. The entire process of a prior art assessment is primarily carried out through manual intervention. Ensuring that patent examiners have the time to conduct a quality search is essential. Further, concluding and issuing a search report is of paramount importance to initiate the first office action. The amount of inter/intra-office paperwork required to issue the action is one area in which automation could help to build machine-enabled prior art search analysis in order to facilitate the issuance of first office actions.

Increased pendency at patent offices is another factor affecting the availability of examiners for the speedy disposal of patent applications. The ratio of examiners to filings is a major concern and a continued challenge. However, there is significant scope to reassess processes and facilitate procedural improvements in order to issue quicker office actions. There is also scope to automate communication capabilities to provide quicker responses. Most applications go through a hearing process, with hearings now mandatory at some patent offices. There could be procedural improvements to facilitate early decision making for every patent application at the examination stage.

The overall time taken to obtain patent grants, particularly in emerging technologies, is of paramount importance. The processes to secure these must meet the demands of the industry. The rewards for investment in nurturing, creating and protecting inventions must be realised in a timeframe that is commensurate with the technology and product lifecycle. In a dynamic environment involving multiple stakeholders in a patent grant process, it is important to identify the key outputs of the patent office functions and the parties that these benefit. The accountability of the key outputs among stakeholders and the identified key outcome to the beneficiary must be assessed in order to understand the office’s operating framework.

Mapping the key phases of the grant process and the possible interventions

It is also important to assess the task-related complexity, interconnected processes and policy dependency of the patent grant process, as well as the time taken for the key phases to pass through the patent office. The idea is to review this dependency and suggest steps to address bottlenecks and streamline the process.

Addressing technological complexity

The technological complexity of an invention is a combination of:

• advancements in science and technology;
• multiple interdisciplinary specialisation and the diminishing contours of innovation silos;
• emerging business paradigms, market expectations and the complexity of issues to be solved; and
• the evolution of an overall ecosystem that supports IP creation.

The examination process is a collaborative and coordinated effort. Successes and failures depend on:

• the orientation of examiners on technology complexity;
• the quality of patent drafts and responses to office actions;
• the evolution of patent law and procedures, and timelines prescribed by legislation;
• the ratio of examiners and controllers to the number of applications to be examined; and
• the pendency of patent applications.

Facilitate faster patent publications

Expedited examination is currently available to select types of applicant and allows certain parties (eg, small and medium-sized enterprises) to obtain early publication by paying additional fees. But why not make this option dependent on the nature of the technology? One solution would be to create accelerated pilot programmes for select technological domains and give applicants in the field the choice to seek expedited examination. The objective of the pilot programme would be to ensure a special focus on the faster examination of applications that demand faster publication and increased scrutiny due to growing market demands. There could be a cap on the number of applications considered for the programme in order to prevent an undue surge in filings at the patent office.

Automating prior art searches can help patent examiners to clear novelty searches, while the interoperability of various search platforms at patent offices can help them to share information and avoid the duplication of work. This can also help to enhance the availability of search specialists and facilitate the closure of more searches.

Patent examinations and issuance of office actions

The ratio of examiners to patent applications is a key influence on the time taken to examine applications and issue office actions. The limited availability of quality patent examiners continues to challenge patent offices around the world. One way to overcome this is to invest in advanced systems that leverage the capabilities of AI to learn from and adapt to the experiences of patent offices in handling and issuing office actions.

As mentioned earlier, having patent offices join a single platform such as the PPH would help to reduce processing time and facilitate the early publication of applications. There is also scope for applicants to use new technology to converse with examiners at other offices in order to accelerate the process of publication and thereby enable faster decision making on grants.

Hearings with controllers: Procedural improvements could include applicants connecting with examiners and organising examiner interviews to help assess any gaps in an invention. This would help applicants to satisfy patentability requirements and empower examiners to make decisions on grants. There could also be procedural improvements to facilitate early decision-making processes at the examination stage, including changing the requirement for mandatory hearings.

Patent grants: A complete procedural and policy overhaul could have a significant impact on the overall time taken to obtain a patent grant. The timing across all areas must be commensurate with the demands of the industry, especially considering the short lifecycle of the technology and the need to realise the investment quickly.

Suggested framework for faster grants

According to the Indian Patent Office’s 2017-2018 annual report, the number of patent filings at the office increased by 5.3% between 2017 and 2018, while the number of examined patent applications more than doubled (108.2% over previous years). The number of granted applications also increased by 32.5% and the disposal of patent applications increased by 57.6%.

Figure 1 shows the average time taken for the critical phases of the patent grant process at the Indian Patent Office.

Figure 1. Patent grant process at the Indian Patent Office

Figure 2. Model for achieving patent grant in 180 days

Possible changes to accelerate this process include:

• using technology to simplify the process and eliminate redundant steps;
• automating certain activities; and
• introducing new policies to facilitate faster grants.

Indeed, similar steps are being taken by Indian Patent Office and IP offices around the world. Table 4 suggests a number of actions to achieve this.

Patent offices around the world have been adapting to the growing needs of inventors. The accelerated pilot programme at the IP Office of Singapore (IPOS) is one example where there are several options available to inventors to secure patent grants within a predictable timeframe. IPOS’s technology-specific accelerated programmes for AI and fintech-related patents show how office practices can keep pace with scientific and technological progress. Further, cooperation between the Association of Southeast Asian Nations shows how offices can work together to accelerate the patent examination process. The way forward is to harness the abundance of technological capabilities available and combine this with policy, administrative and procedural overhauls to strengthen the patent prosecution system and benefit inventors all over the world.