Reimagining the patent grant process

Technology is changing quickly and radically, and the patent issuance process must do the same to stay relevant

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.

 

Table 1. Adopting IP 4.0 principles at each stage of the patenting process

Key outputPrinciples
SustainabilityAgilityAdaptabilityPredictability and trustworthinessConsumability
Filing of patent application  Improve conversational tools to help applicants prepare their applications in line with procedural requirements. Agile, intuitive seamless experience enabling applicants to file patent applications conveniently.
Patent publicationOffer peer-to-peer file sharing to reduce pendency in the patent office (ie, number of pending applications).Facilitate faster file-sharing to improve the process time from the date of filing the application to publication. Generally, this is idle and under-utilised. (It can be best utilised for conversing with applicants and to initiate the examination process.) Under patent law, 18 months is mandatory, but given today’s information highway, we need to take steps to change the status quo and bring this down to three months.A minimum time to publish will further fast track the advancement of know-how.
Issue of office actionThe ratio of available qualified examiners to patent applications filed can be scaled significantly by adopting tools for both search and analysis. Predictability tools for applicants to predict the examination outcome or the probability of its application being accepted. Develop advanced algorithms based on the past experiences of the patent offices.Fix timelines to issue first office actions and set a firm timeline (eg, six months) to grant the patent if queries are addressed within two office actions.Predictable and time-bound examination outcomes.
Hearing with controllerIncrease availability of controllers for decision making on patent grants (ie, ratio of number of controllers to patent applications for disposal).Re-think the current patent office practice, including digital coverage to facilitate the hearing. Empower senior examiners to make decisions on patent grants. 
Grant of patent application   Fix timelines to obtain patent grants with interlinked procedural deadlines to issue office, examination and hearing process.Obtain grants in minimum possible time.

Table 2. Key outputs of the patent office functions and the parties that they benefit

Key outputAccountabilityKey outcome to the beneficiaryBeneficiary
FilingApplicant, attorney or agent, patent office administrationDigital copy of the patent specification with acknowledgement from the patent office and patent application numberApplicant
PublicationPatent office administrationDigital copy of the patent specification available in a public domain through patent office journalsPublic at large, subject matter experts, inventors and researchers, research and academic institutions, policy makers, analysts, start-ups and enterprises
ExaminationExaminer, controllerSoft copy of the examination report issued to the applicant directlyApplicant
Opposition, hearings, disposalsController, examiner, patent office administrator, applicantFinal decision of the controller or adjudicating officers of the patent office conveyed to the applicantApplicant
Renewals and maintenanceApplicant, patent office administratorIssuance of renewal notification to the applicant after the payment of prescribed annuity feesApplicant

Table 3. Mapping the dependency of key phases in the patent grant process

Key phasesDependency
Average time takenTask-related complexityInterconnected process dependencyPolicy dependency
Filing and pre-publication14 weeks from the priority date of filing.Pre-processing involves thousands of patent applications to be scanned, subject matter classified and sensitivity matters identified, involving a lot of bandwidth and capabilities at the patent office.  
Publication18 months from the priority date of filing.  18 months is the mandatory

timeline for all publications other

than expedited applications.

Examination12 to 16 months after publication.Complexity of the invention determines the progress and speed of the examination.Quality and speed of the examination process depends on the clarity of communications exchanged, capacity and capability of the examiners, and the effectiveness and timely response of the applicant to each office action. 
Opposition, hearings, disposals (if required)12 to 15 months after examination and excluding any pre-grant opposition process.  In certain jurisdictions, pre-grant

opposition and hearings are

mandatory.

Issuing the grant notification, intent to grant or notice of allowance2 to 3 months after hearing.   

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

Figure 02

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.

Table 4. Actions to accelerate critical phases of the patent grant process

StepAimPossible actions
Steps A and B: filing to publicationUsing technology to simplify the process and eliminate redundant steps
  • Digitising forms with different checkboxes (eg, application for grant of patent and request for search and examination) so that an extract of the application can be sent to the relevant department within the patent office. (Example: WIPO Electronic Document Management System.)
  • In countries where the translation process is mandatory, machine translation of procedural aspects to help the applicant understand the requirements and facilitate faster submission. The translation of the specification itself will require more advanced human and language skills. We are currently on a learning curve and still exploring effective solutions to machine translations of claims and contextual information.
  • Instead of scanning a physical copy, the process of entering the details of the invention can be enabled in a secure digital environment with restricted access for inventors. This capability can be built on the Cloud and the information can be retrieved by inventors at any point. This can help to minimise or eliminate physical scanning. (Example: Moroccan Office of Industrial Commerical Property.)
  • The data involved in patent filing is fundamentally structured and well organised. Therefore, adopting tools and techniques for processing technical data at high speeds can help to reduce the time taken by the patent administration.
  • The physical examination process can be replaced by systems that have in-built pre-defined programmes that can perform the validation and sufficiency of data checks.
  • Deep learning algorithms can help to detect sensitive information and can be screened without manual interventions.
  • Delays over interdepartmental file tranfers and clearances can be eliminated through the use of technologies such as blockchain, which can facilitate transparent and agile decision making through distributed ledger technology.
  • Automation of the process to segregate the application that must be handled by various departments within the patent office can help to reduce manual interventions.
Automating certain activities
  • AI-enabled interactive chatbots can help applicants to prepare applications as per the patent office requirements and reduce procedural rejections. Many procedural clarifications can be obtained through cognitive conversation tools.
  • Configure the system to perform specific actions by a pre-defined cut-off date. For example, an output file can be generated from a set of data fields within patent documents. (Example: WIPO Publish.)
Introducing new policies to facilitate faster grants
  • The application form can be simplified into a single form that includes both the application for grant of patent and the request for search and examination. This can simplify the process and reduce the burden on the applicant to complete multiple forms during the period from patent filing to grant.
  • An online submission process can enable applicants to submit at any time from various geographical locations. (Example: WIPO File.)
  • Conducting the entire application process online must be mandatory by default so that the process from filing to grant can be fast tracked. Exceptions can be made if the applicant is unable to leverage online facilities.
  • Formality checks can be completed within two working days with a substantial amount of automation.
  • Applicants currently have no visibility of the allocation process and the availability of examiners. Creating transparency and the possibility of selecting an examination date based on an examiner’s subject matter expertise and workload can eliminate a lot of uncertainty around the possible completion date.
  • The interdepartmental approval process for clearances on patent applications related to atomic, defence and other sensitive matters is a separate channel of application and clearance decisions can be limited to five working days.
  • The entire process of publishing the grant in the Patent Journal can be expedited and the timeframe limited to a maximum of 90 days.
Steps B to E: publication to issuing of examination reportUsing technology to simplify the process and eliminate redundant steps
  • Deep learning can be applied to generate keywords, develop search strategies, screen search results and create search reports. (Example: AI initiatives at the EPO.)
  • Through the use of AI, the formal examination process that checks the completeness of documents can be supported and facilitated through auto-enabled methodologies, susbtanitally reducing the time taken for the formal examination process.
  • Substantial investments in deep learning capabilities to understand the novelty, inventive steps and utility associated with a patent application will significantly reduce the assessment time.
Automating certain activities
  • Automation of patent classification – the classification of documents can be powered through AI. Automation of validation checks can substantially reduce the dependency on manual checks. (Example: IP Australia’s patent auto-classification.)
  • Automatic filtering of sensitive subject matter (eg, atomic energy and defence matters) can separate such applications for processing through an alternative channel. (Example: the Korean Intellectual Property Office has established a database for patent publication data using International Patent Classification H for machine learning.)
  • Automatic allotment of examiners based on their workload, specialisms and capabilities. This requires the automation of two important office functions: current workload estimation based on the number of applications handled, complexity of the applications and time taken for completion of the examination process; and the mapping of specialisms, experience, capabilities and geographical locations. (Example: emerging technologies in USPTO business solutions.)
Introducing new policies to facilitate faster grants
  • The process of allocating an examiner based on their current workload and expertise should be completed within a set period (eg, 18 days).
  • First examination reports should be issued within a set period (eg, 42 days).
Steps E to G: issuance of examination report to granting of patentUsing technology to simplify the process and eliminate redundant steps
  • Helpdesk services that can provide automatic replies to applicants can be very useful for avoiding procedural delays in office action communications. (Example: outline of Japan Patent Office’s activities using AI.)
  • Video conferencing with the ability to connect multiple stakeholders from multiple regions is vital. The platform must be built to conduct high-quality proceedings covering both data and voice transmissions.
  • Patent offices and applicants will both benefit from the automatic generation of patent annuities based on due dates, patent validity, annuity collection timelines, reminders for payment and receivables, and status reports. (Example: digitisation at the Swiss Intellectual Property Office.)
  • A digital registry of patent documents capable of cooperating with other registries around the world will help to deliver value added services such as information retrievals from various types of file configurations, assignments and ownership alterations, as well as other cross-border work.
Automating certain activities
  • The automated extraction of claim elements from the invention can help applicants to build their specifications. One of the key issues is that inventions should not be disclosed in any open environment that can inhibit the novelty of the invention. Therefore, such capabilities must be built in a highly secure environment where the privacy and confidentiality of the information is protected.
  • Building automated data analysis systems to validate, clean, transform and build innovative data models to address the complexities of decision making can support the office administration process.
Introducing new policies to facilitate faster grants
  • The opposition to post-grant opposition period should fall within a specific time frame (eg, 12 months).
  • Amend examiners’ capabilities to make decisions in order to reduce the burden on controllers and limit the role of controllers to critical decisions only.

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.

Action plan

Our forward-looking model for a reimagined patent grant process is a culmination of the ways in which automation, technology and policy interventions can be applied to each phase in the granting of a patent application (see Figure 2). The key features of the proposed model are as follows:

  • Step A (filing) to Step B (publication) should be achieved within 90 days with fast-track formality checks, digitally enabled single application forms covering examination and grant, and easing out procedural issues in order to publish the patents within three months. This will depend on the patent office’s ability to process the digitised data and leverage AI for automating validation and processing, intelligent system-enabled checks and reducing manual interventions.
  • Step B to Step D (examination report issued to the applicant) to be fast tracked in 60 days if there are no issues or objections cited during the extended search report and opinion. The success of reimagining this important phase of the patent grant process will depend on the use of AI-powered deep learning capabilities in patent classification, searches, validation and the issuance of examination reports. On a parallel track, policy measures to enhance the capabilities of examiners for fast-track clearances will be essential.
  • For applications that raise no issues during the substantive examination process, Step D to Step F (patent grant) should be achieved within 30 days. Advanced workflow management systems that can eliminate repetitive administrative work, handle interdependency of various processes, follow up on incomplete tasks and comply with standards and operating practices will be the foundation for efficient management at the patent office.

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