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Alternatives in Patent Search and Examination Alternatives in Patent Search and Examination Policy Guide Policy 2014 Policy Guide on Alternatives in Patent Search and Examination Policy Guide – Alternatives in Patent Search and Examination One of the important tasks of a patent of- Fig. 1 Number of Patent Applications fice is to decide whether a patent shall be Filed and Number of Patent granted, or an application shall be refused, Examiners in Selected Patent Offices based on the procedures and patentability 700000 12000 50000 400 requirements under the applicable national 45000 600000 350 10000 40000 law. Making such decisions accurately, 300 500000 examiners Nb of 35000 examiners Nb of effectively and efficiently is a complex 8000 30000 250 mission, since many patent offices receive 400000 6000 25000 200 a constantly growing volume of patent 300000 20000 150 4000 Nb of applications applications of increasing complexity. Nb of applications 200000 15000 100 10000 100000 2000 The size of each patent office and the 5000 50 scale of its operation differ considerably 0 0 0 0 CN US JP KR EPO IN BR EG MY CO from one patent office to another. As an illustration700000 of the issue, one patent12000 office 50000 400 45000 received600000 more than 600,000 patent ap- 350 10000 40000 plications in 2012, while another patent 300 500000 examiners Nb of 35000 examiners Nb of 8000 office received six patent applications 250 400000 30000 in the same year. 1 The number of 6000patent 25000 200 300000 examiners employed per patent office 20000 150 4000 Nb of applications Nb of applications 200000 15000 varies widely: from only a handful of pat- 100 10000 ent examiners to, with respect to at2000 least 100000 50 one patent office, over 7,000 examiners. 5000 0 0 0 0 The internationalCN US legalJP framework,KR EPO such IN BR EG MY CO as the Paris Convention for the Protection of Industrial Property and the Agreement CN: China; US: United States of America; JP: Japan; KR; on Trade-related Aspects of Intellectu- Republic of Korea; EPO: European Patent Office; IN: India; BR: Brazil; EG: Egypt; MY: Malaysia; CO: Colombia al Property Rights (TRIPS Agreement), Sources: WIPO Statistics Database; IP5 Statistics; IP leaves Member States much room to India Annual Report 2011-2012; Brazil’s Patent Reform, maneuver in introducing any particular Center for Strategic Studies and Debates (2013); WIPO document PCT/A/40/4; WIPO Regional Seminar on Effective approach to prior art search and exam- Utilization of the Patent Cooperation Treaty (PCT) and International Work Sharing Initiatives (November, 2013); ination by their patent offices. and the website of the Superintendencia de Industria y Comercio (Colombia) 1 World Intellectual Property Indicators 2013, WIPO 1 Policy Guide on Alternatives in Patent Search and Examination The purpose of this Policy Guide is to Policy Orientation illustrate various options available to countries for the search and examina- Hiring enough patent examiners with tion of patent applications. The choice of the requisite expertise, providing them a search and examination system in each with the latest prior art search tools and country should be based on its national constantly training them to upgrade their policy and strategy, in accordance with skills could increase the likelihood of the its specific circumstances. This Guide validity of patents, although it does en- therefore addresses non-exhaustive tech- tail a high administration cost. From the nical factors which may assist shaping broader policy perspective in designing a such national strategic consideration. patent system, however, hiring patent ex- As economic, social and geo-political aminers per se cannot be a goal in itself. environment of each country may develop over time, the Policy Guide is intended Designing patent granting procedures to support Member States in selecting in a patent office, such as patent search a best option suitable for each country. and examination, has to be considered in the context of the entire patent system, including the judiciary body, which has the ultimate competence to decide on the validity of patents, if they are challenged. Within limited national resources, patent offices conduct search and examination with the aim of ensuring that invalid pat- ents are either not granted or else can be removed easily and effectively. In other words, patent search and examination within a patent office should support the broader policy goal of maximizing the so- cial gains from the patent system against the social costs for maintaining the patent system. In that regard, a country’s alloca- tion of costs among a patent applicant, third parties, a patent office and a judicial body has to be carefully evaluated, taking into consideration socio-economic devel- opment and the way the patent system is utilized in the country. 2 Policy Guide on Alternatives in Patent Search and Examination In the past, alternatives in patent search and examination tended to be discussed BOX 1: Search and Examination Policy – from the perspective of a legal and insti- a Dynamic Concept tutional framework: (i) formality examina- tion only; (ii) formality examination and The choice of a search and examination prior art search; and (iii) formality exam- system in a particular country may depend on ination, prior art search and substan- economic, social and geographical factors in tive examination. While they constitute and surrounding that country. Thus, with the basic types of search and examination development of its surrounding environment, frameworks, there are also various other an ideal search and examination system will equally important ways to operate search evolve with time. Further, countries are free and examination work in patent offices. to introduce a step-by-step approach with Countries are free to conduct substantive respect to patent search and examination. examination in limited fields of technol- Patent search and examination work heavily ogy or with respect to the compliance depends on skills and competencies of each with certain patentability requirements. examiner, which can be developed mostly Further, various international cooperation through his/her experiences. Therefore, mechanisms, programs and initiatives gradually enlarging the scope and extent of have been developed and employed in patent search and examination is an option order to maximize efficiency and produc- for patent offices, particularly those that have tivity of national patent offices. limited experience in this area. To operate effectively and sustainably, a patent office should be innovative in finding the best option available within its resources and according to its specific circumstances. 3 Policy Guide on Alternatives in Patent Search and Examination Factors Determining the or by non-residents who file national ap- Choice of a Search plications directly with the office, is anoth- and Examination System er factor to be considered. If the majority of applications are filed by non-residents, The ideal patent search and examination the likelihood is higher that search and system may differ from one office to an- examination work products prepared by other. To choose from various options other offices on the same invention are available for designing a search and ex- available, and consequently international amination system, the following factors, cooperation may be beneficial. although non-exhaustive, may be taken into account. National Policy and Rational Allocation of Resources Workload and the Origin of Applications Substantive patent examination is often regarded as a gatekeeper that prevents The demand for patents in the country frivolous and substandard patents to be concerned, as measured, for example, granted. Therefore, the introduction of by the number of patent applications, search and examination process in the shapes what constitutes an adequate national patent system has been high- administrative system. The size of the lighted in the context of national devel- market, the type and extent of industri- opment and innovation policies. al activities or the overall population of the country, may relate to the number of At the same time, a patent office needs patent applications filed in that country. significant financial and human resourc- Since the number of patent applications es to conduct search and examination and patent grants directly affect fee in- by itself. A high degree of technical and come, the demand for patents in the legal expertise – not only to understand country concerned relates to the financial the technical aspect of inventions, but sustainability of the patent office’s search also to interpret the legal scope of patent and examination system. For example, claims and to analyze the compliance if the number of patent application is with the legal requirements prescribed in very small or concentrated mainly in one a patent law – is required to carry out a full technological field, employing qualified set of patent examination. Consequently, substantive examiners across all fields there is an opportunity cost in not being of technology may require justification. able to employ highly skilled scientists and engineers in R&D in national prior- The main origin of the incoming applica- ity areas. Moreover, a sufficient techni- tions, i.e., whether applications are filed cal infrastructure (such as databases) by residents, by non-residents using the need to be maintained in a patent office Patent Cooperation Treaty (PCT) system to conduct a thorough prior art search. 4 Policy Guide on Alternatives
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