Reports on FICPI-AIPLA Colloquium “A Comprehensive Approach to Patent Quality” June 8-9, 2007

1. Reports on FICPI-AIPLA Colloquium “A Comprehensive Approach to Patent Quality” June 8-9, 2007 Kay Konishi APAA Patents Committee, APAA Council Meeting in Adelaide, Nov. 18, 2007

2. 1. Backgrounds • “In 2001, and again in 2003, FICPI and AIPLA joined forces to host high level Colloquia for patent offices and user groups to explore problems arising from the exploding growth in the number of patent applications worldwide and their impact on the functioning of the patent system. Although recent proposals adopted by the PCT Assembly have alleviated such problems to an extent, the crush of unexamined applications remains, both in the PCT and in regional and national patent offices. Moreover, the public increasingly perceives the pressure to reduce the backlog of pending applications to have resulted in a lower quality search and examination of patent applications, with more questionable patents issuing as a consequence. Policy makers are beginning to question whether the patent system is serving the public interest as intended. “

3. 2. Speakers/ Participants • Offices: • EPO: Alison Brimelow (President-Elect), James Pearce (Director Metrics & Standards), Colin Philpott (Principal Director of Quality Management), Fernand A. Eiden (Biotech. Principal Director) • USPTO: John Doll (Commissioner for Patents), Mark Powell (Director of Technology Center 2600) • JPO: Toshimichi Moriya (Deputy Commissioner) • Other Offices: Finnish PO, UK IPO, IP Australia, Swedish PO, KIPO • WIPO: Philip Thomas (PCT & Patents Senior Director-Advisor) • Users: JIPA, IPO, Netherlands Institute of Patent Attorneys (NIPA), Business Europe, AIPPI, LESI, BIO, TMPDF, Finnish Association for Corporate Patent Agents • Attorneys: FICPI, ABA/IPL, epi, Netherlands Institute of Patent Attorneys (NIPA), AIPLA, APAA • Judges: German Supreme Court, Hague Court of Appeal, US District Court • Total 80 participated

4. 3. Several Aspects of “Quality Patent” • Time-series factors: • Pre-filing • During prosecution • Post grant (licensing and enforcements) • Stakeholders: • Applicants/ Patentees • Offices • Judges • 3rd parties/ Competitors • Investors • Metrics: • Validity • Timeliness • Costless • Global filing aspects

5. 3. Several Aspects of “Quality Patent” Balancing… “Quality Patent” Applicants:“Costless” Offices:”Examination Efficiency”

6. 3. Raised problems <Day 1> • Deficiencies in patent applications and problems created by applicants and attorneys (EPO, JPO, USPTO) • Examination problems encountered by applicants (FICPI, ABA/IPL, JIPA) • What is a quality prosecution? (IPO, epi, EPO) • PCT quality and timeliness: Impact of PCT changes (Finnish PO, NIPA, WIPO) • PCT quality and timeliness: Quality assurance of PCT searches (USPTO, JPO, EPO) • What is a quality patent?: User perspective (Business Europe, AIPPI, LESI) • What is a quality patent?: Judicial perspective (Judges)

7. 3. Raised problems <Day 2> 8. Problems encountered by applicants in adequately protecting inventions: Differing national application format (AIPLA), Timely, comprehensive search (TMPDF), Claim set necessary to cover infringements (Finnish Association for Corporate Patent Agents, BIO) 9. Defining a role for smaller offices (UK IPO, IP Australia, Swedish PO) 10. Managing growth while enhancing quality (USPTO, EPO, JPO, KIPO)

8. 4. Discussions • 2. “Examination problems encountered by applicants” • FICPI “Examination problems encountered by EPO-applicants” • almost 4 years until grant • Lengthy opposition/appeal proceedings • Too many “A2” documents • Very rigid EPC Art. 123(2) “new matter” practice • PCT International Examination is mostly ignored by EPO • EPO Appeal Board decisions have no direct impact on national courts • ABA “Examination problems encountered by applicants –USPTO users” • 20% new examiners each year • Excessive pressure on applicants to narrow claim scope • Examiners are not familiar with PCT practice • All PCT searches are being outsourced to, e.g., IP Australia • Over 25% of PCT searches provided after 30 months

9. 4. Discussions • 2. “Examination problems encountered by applicants” • JIPA “Examination problems encountered by applicants” • High rate of patent invalidity in infringement lawsuits (2006: 18 out of 30 cases before Tokyo district Ct.) • Increase of patent invalidity in invalidation trial at JPO • Most patents invalidated in the ’05 & ’06 court decisions were granted during 1995-2000 • Good quality examination standards for inventive-step necessary

10. 4. Discussions • 4. “PCT quality and timeliness” • Finnish PO “Impact of PCT changes –The Finnish PO approach to PCT quality” • Serves as ISAs/IPEAs • Minimum requirements for ISAs/IPEAs (Rules 36 & 63): Quality Management System (QMS) • ISO 9001:2000 standard based • 100% reports sent to WIPO within the time limit • NIPA (Vereenigdge) “Impact of PCT changes” • In the written opinion, more often clarity and non-unity-of-invention objections which make that not all claim are searched • When entering the EP phase, the written opinion is maintained as first substantive examination report; if no claim amendment are filed, it’s difficult to avoid a summons to attend oral proceedings as second communication • Even more Euro/PCT applicants would rather appreciate to slow down the procedure up to grant instead of having speedy proceedings

11. 4. Discussions • 4. “PCT quality and timeliness” • WIPO “Impact of PCT changes” • Poor quality helps no-one; 100% quality is impossible • Supplementary search proposals discussed by PCT reform WG but not agreed • Supplemental search: greater coverage of increasingly linguistically diverse prior art • All authorities must have QMS (Rules 36 & 63)

12. 4. Discussions • 6. “What is a quality patent?” • Businesseurope “Patent quality” • Need for a clarification of “skilled in the art”; c.f., KSR case • Industry can help “patent quality” by clearly defining and describing the invention made, and by making honest arguments • Lawmakers and courts must help by requiring clear and convincing evidence to invalidate a claim granted, by striving to give claims a scope which is fair and consistent with the invention described and argued during examination, by clarifying that the skilled in the art is capable of common sense initiatives, and by discouraging harassment or delaying techniques • Former Dutch patent judge “What is a quality patent? A judicial perspective” • Some national courts are not fully aware of the uniform character of the grounds for revocation and the scope of protection • Some national courts are feel free to ignore the BOA of the EPO • No court having the last say on the interpretation of the EPC

13. 4. Discussions • 8. “Problems encountered by applicants in adequately protecting inventions” • TMPDF “Timely, comprehensive search – what applicants need but do not have” • Sometimes no correlation with two or three Pos doing poor searches • JPO is always best at finding Japanese-language citations • To avoid wasting money on securing invalid patents, applicants need the results of the EPO, USPTO, and JPO searches as soon as possible. • It is regrettable that the PCT supplemental search proposal has not been implemented.

14. 4. Discussions • 10. “Managing growth while enhancing quality” • USPTO • Sep., 2006: 701,147 pending applications, 4883 patent examiners • March 2007: 714,476 pending applications, 5049 patent examiners • EFS-filing: 2.2% (2005) to 50% (2007 to date) • JPO • 500 fixed-term examiners (from 2004 to 2008) • More outsourcing of Prior Art search: 197,000 (2006), 240,000 (2010 planned) • KIPO • Number of examiners: 558 (2004) to 727 (2006) • Number of outsource PA search: 65,000(2004) to 133,000(2006) • The world’s fastest examination: 22.6 month (2002) to 9.8 months (2006) • EPO • Examiner headcount increased: 2,090(1998) to 3,400(2003), 63%+ • Cluster operation Quality Control introduced in April 2007

15. 5. Take-home Message We need “harmonization”, NO “unification”. (FICPI President, Danny Huntington)