Trilateral Patent Office Heads Pledge Cooperation, Patent Quality Improvements

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Wrapping up their annual Trilateral Patent Office Conference at the Patent and Trademark Office in Alexandria, Va., the leaders of three of the largest patent offices in the world Nov. 19 promised greater cooperation in harmonization and work sharing efforts, but each also listed among his top priorities for the upcoming year improvement in the quality of patents granted within his own office.

Patent and Trademark Office Director David J. Kappos, President of the European Patent Office Benoît Battistelli, and Commissioner of the Japan Patent Office Yoshiyuki Iwai reaffirmed those commitments during a Nov. 18 luncheon program in Washington, D.C.

Trilateral Conference Results.

According to a press statement summarizing the talks among the three executives during their annual conference, “the Offices continued to focus on addressing global patent workload challenges, in particular, decreasing pendency and examination backlogs, improving patent quality, and leveraging IT solutions to simplify and speed up processing of patent applications.”

Their focus was said to be on work sharing--where one office can leverage search and/or examination work done earlier by another office. The trilateral office heads agreed to:

• expand existing Trilateral Office cooperation on both Patent Cooperation Treaty and Patent Prosecution Highway agreements to the IP5, their three agencies plus the Korean Intellectual Property Office and the State Intellectual Property Office of China, by inviting other two agencies “to participate in the ongoing PCT-PPH pilot, which leverages fast-track examination during PCT national or regional phase processing on the basis of claims indicated allowable in the international phase” (79 PTCJ 78, 11/20/09);

• launch a pilot program for the PTO's First Look Application Sharing, or FLASH, initiative, which is intended to provide search and examination results faster to the EPO and the JPO when the PTO is the office of first filing; and

• continue development of a Common Citation Document, or CCD, “to enable examiners and patent information users to see, in a single document, the prior art cited by each office for each patent family member”; a Version 1 public release is targeted for November 2011.

“Initiatives such as the PCT-PPH, FLASH, and CCD all contribute to better work-sharing, and will benefit our users,” Iwai said at the end of the conference. Battistelli was “particularly pleased” with the CCD developments. “Progress on these and other initiatives is key to enhancing the quality at the Trilateral Offices and promoting the integration of the international patent system,” he said.

“We are grateful to our partners at the EPO and the JPO for their commitment to increasing work sharing because it enables us to reduce patent pendency and enhance patent quality for patent applicants around the world,” Kappos said in summary.

Quality Within Office; Work Sharing Between Offices.

The Intellectual Property Owners Association organized the Nov. 18 two-hour luncheon program on behalf of the Industry Trilateral Organization--American Intellectual Property Law Association, BusinessEurope, Japan Intellectual Property Association, and IPO.

Moderator and EPO Vice President Richard F. Phillips of ExxonMobil Corp. pointed out that, with 15 months in office, Kappos has seniority among the three office heads. Battistelli took office in July (79 PTCJ 513, 3/5/10); Iwai in August.

Each agency executive gave a presentation outlining his early goals and hopes for enhanced cooperation and then Kappos conducted a brief question-and-answer session. Kappos acknowledged that the PTO cannot address patent quality issues without joint efforts with the other offices, adding that his own agency's goal for 2011 is continued work on the quality metrics were introduced Oct. 7 (80 PTCJ 785, 10/15/10).

Battistelli said that his number one priority is “to maintain and if possible improve” the quality of patents granted by the EPO. He also cited a need to increase the efficiency of the office at no additional cost to patent applicants and owners. He pledged “to optimize our procedures but not at the cost of our quality.”

But ultimately the purpose of the annual conference was to discuss work sharing and harmonization efforts, and the luncheon program participants gave considerable attention to that purpose. Each noted the ever-increasing percentages both of nonresidents filing patent applications in his jurisdiction and residents filing parallel applications in foreign patent offices.

All three agreed that work sharing efforts among the offices depend to some extent on the fast action by the office of the patent application's first filing. The EPO puts emphasis on completing the first action--a research report and a written opinion--within six months, Battistelli said. The EPO also has a fast-track “PACE” program that is no cost to the applicant, but used in only about six percent of the applications.

Iwai cited the JPO's “JP-First” program, initiated in 2008 specifically for PCT and PPH filings. Even without the FLASH initiative, the USPTO allows applicants in PPH and PCT programs to accelerate examination by filing a petition to make special under 37 CFR §1.102(d).

However, the three were not uniform as to the preferred mechanism for work sharing. The clear preference of Kappos and Iwai for bilateral PPH agreements conflicted with Battistelli's reliance on the PCT. He noted that European patent applicants rarely request to participate in PPH pilot programs, and he agreed to perform research to find out why.

On the other hand, Battistelli and Kappos both cited progress on their joint development of a common classification system, based on the European Classification system, that will incorporate the best classification practices of the two offices (80 PTCJ 838, 10/29/10). The State Intellectual Property Office in China uses the European system today as well, according to Battistelli.

Battistelli Seeks EU Patent, Court.

During an Nov. 16 press conference at AIPLA headquarters in Arlington, Va., however, Battistelli said that even after the parties agree to a common system, “it must be adapted every day,” given technological developments in each jurisdiction. He said that the EPO and the USPTO would thus have to co-manage the maintenance of the system and that details on that point had yet to be resolved.

Kappos affirmed nonetheless that “the criticality of the challenge is understood by all three offices.”

Battistelli probably has the most difficult task of the three office heads, as he seeks to fulfill two goals he announced when he took office in July--a European Union-wide patent and the development of a European patent litigation system centered in a single jurisdiction similar to the U.S. Court of Appeals for the Federal Circuit.

He said the Europe-wide court depends on the EU-wide patent, which would be issued by the EPO and considered valid in each of the 27 EU countries. BNA asked him whether he had lowered hopes for a single EU patent given Spain's continuing objections to the current plan (81 PTCJ 91, 11/19/10).

Battistelli responded that he remains optimistic. The issue for Spain is that the proposal put forth by the current EU Belgian presidency is for all patents to be translated into English, French, and German. But the Spanish patent office's constituency includes a heavy representation by Latin and South America and other Spanish-speaking nations. Battistelli said the EPO is attempting to make a contribution by offering to employ machine translation tools to overcome language barriers.

No Short-Term Harmonization on Patent Eligibility.

But even if procedural harmonization is advanced, policy harmonization is still not likely any time soon.

During the Nov. 18 luncheon session, Battistelli indicated that he envisions only “a system as harmonized as possible.” Kappos had a similar comment. When Kappos said that the PTO cannot address its quality and workload problems without harmonization, he added, “as much as we possibly can [realize] in one system.”

In fact, when an audience member asked specifically if a single worldwide patent system is possible, Kappos held out some hope--he cited the Berne Convention and Madrid Protocols for their global effects on the copyright and trademark systems respectively--but added that such worldwide harmonization of patent law was unlikely to occur in our lifetimes.

Still, he said, we should commit ourselves to take the steps we can in our time.

Nevertheless, the difficulty of policy harmonization was evident in a single example cited by Battistelli during the AIPLA press conference. Battistelli was proud of the EPO's lower patent issuance rate for applications in life sciences--28 percent compared to 42 percent overall. He attributed the difference to a “more rigorous examination” of patent applications, adding that patents directed to “plant or animal varieties or essentially biological processes for the production of plants or animals,” are prohibited under Article 53(b) of the European Patent Convention.

The absence of such a patentability ban in the United States--not to mention the industry outcry if one technology center were subject to “more rigorous examination” than others--suggests that harmonization on that particular issue may not be achieved any time soon.

By Tony Dutra

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