“IP Authorities” Pay Homage To PCT, Call For Action On Harmonisation, Backlog

Improved searches and application quality and a focus on backlog reduction are necessary to improve the patent system, patent authorities concluded at a World Intellectual Property Organization symposium last week. This will require patent offices around the world to work together, and the WIPO Patent Cooperation Treaty, most speakers said, is the path forward for global patent coordination.

The backlog of unprocessed patent applications stood at 4.2 million worldwide in 2007, according to the most recent WIPO World Intellectual Property Indicators report (IPW, WIPO, 20 September 2009).

“This is unsustainable,” said Francis Gurry, director general of WIPO. Jørgen Smith, who directs the Norwegian Industrial Property Office, wondered whether the current patent system is capable of digesting all the new applications likely to arise as the pace of technological innovation continues to increase.

Gurry added that one of the main challenges for the future is to ensure that action is coordinated internationally. Efficiency and the sharing of best practices are also important, he said.

Regional coordination initiatives are already happening between different patent offices around the world, some of whom presented at the WIPO Global Symposium of Intellectual Property Authorities, which took place in Geneva on 17-18 September.

Such initiatives included a Nordic Patent Institute, discussed by Smith, and a collaboration led by Brazil for nine South American countries, presented by Jorge de Paula Costa Ávila, president of the National Institute of Industrial Property in Brazil.

On the latter, Ávila said “developing countries need an IP system which works despite the fact that they’ve had a small number of endogenous patents.” To that end, the South American cooperation model is trying to engage patent offices in the region through a common information technology platform, communication, and voluntary as well as requested support for search and examination between offices.

The theme of this symposium was IP infrastructure. Gurry said the symposium will become an annual event with changing themes intended to address technical concerns of patent authorities before the General Assemblies, which addresses political concerns.

But in order for these to translate into global increases in efficiency, technical compatibility and interoperability and legal compatibility and interoperability between them is critical, Gurry said.

“All of these initiatives are ultimately compatible with a strengthened PCT,” he added.

Addressing previously-expressed concerns that the strengthened PCT would lead to harmonisation of patent laws that could be potentially damaging for developing countries (IPW, WIPO, 4 May 2009) Gurry said that the planned “roadmap” for the PCT’s future is “not about limiting TRIPS [Trade-Related Aspects of Intellectual Property Rights] flexibilities, it has nothing to do with this.” He cited Article 27.5 of the PCT which he said promises that nothing in the treaty limits in any way the freedom of contracting parties to determine their own conditions of patentability nor their sovereign right to grant or refuse a patent.

“We just want efficiency and to improve the PCT system,” Gurry concluded.

“No additional harmonisation” is involved in the South American cooperation model, said Ávila. Additional harmonisation would be “radical at this moment,” but this does not prevent patent offices working together, he said.

“We have nothing against harmonisation,” Ávila explained later, adding “if we could harmonise a bit more” it could be helpful. But “if we wait for harmonisation before we cooperate, then we’ll be wasting time.”

Poor IP Infrastructure Impedes Efficacy of Patent System

Poor or incomplete intellectual property infrastructure can slow down patent processing and reduce patent quality, said several speakers at the symposium.

The message from Stephen Adams, director of Magister, a UK consultancy, was that “tackling document quality has to start at the source.” Too often, he said, “dirty data” is left until too late in the process, and that it should be addressed “ASAD” – as soon as detected. This would significantly help with the massive patent application backlog facing many IP offices, he said. From 2004 to 2008, the EPO had to make 4.5 million individual corrections in 18.9 million documents, 1.7 million in 2008 alone, he said. Adams also highlighted the flaws in search engines and the inerasable “human factor,” in which choices of words or concepts may vary to get to the same point.

Rupert Mayer of Unycom, a German software services company, searched for prior art on automatic razors and found relevant information listed under “shaver,” “de-hairing device,” “hair removing device,” and even “unhairing device.” Similarly, a search for Aspirin might find it listed under acetylsalicylic acid, or simply ‘painkiller.’ This, he said, just makes patent information difficult to access and use.

Boolean searches, which lack a built-in tolerance against inconsistent use of language or spelling mistakes, often lead to problems of too many results or – when a search is narrowed – missing relevant results, Mayer said. Unycom is working on a search engine that refines searches based on a statistical approach (calculating similarity between documents using word distribution) that he said might help improve prior art searches.

Languages can also be a problem in translation. One presentation which generated discussion was the proposal of Robert Armitage of Eli Lilly Company to make English the exclusive language of the PCT, or at least to provide strong incentives for applicants to apply or provide translations in English. This way, he argued, there would be a “common anchor” linguistically.

However, others pointed out that privileging one language over another is politically difficult, as evidenced by a later presentation by Alberto Casado Cerviño of the Spanish Patent and Trademark Office, who emphasised the importance (though not exclusivity) of Spanish coverage, since it will be one of the five most spoken languages in the world after 2050 and is growing particularly in the US, one of the world’s major patent producers.

An audience member suggested that “even an English patent is not written in English,” and said that most end users needed patent language translated into something more readable.

William New contributed to this report.