El articulo de Nature
A question of priority
How to sustain the reliability of the patenting system?
The need for scientists to establish priority for their discoveries is fundamental, but how they do it changes with the years. In the seventeenth century, scientists encrypted their results in anagrams embedded in clearly dated letters sent to colleagues.
Science publishing and patenting nowadays provide more transparent systems for establishing priority, but both are under pressure. In particular, patent offices everywhere have been swamped with applications since the revolutions in information technology, biotechnology and materials sciences, and have struggled to clear mounting backlogs. The European Patent Office (EPO) has coped by recruiting more examiners and by the driving productivity of its staff. But have productivity demands gone too far? Are patent examiners being pushed to work so fast, as they claim , that they can't deliver quality patents that would withstand scrutiny?
EPO staff are not complainers by nature, so they should be listened to, particularly at a time when external stakeholders are also voicing concerns. Many observers say that the EPO's commercial orientation overly favours the applicants as customers to be satisfied. Others point to the registration revenues to national patent offices from EPO patents, and say that this factor discourages governments from pressing for quality over quantity.
But what exactly do we mean by patent quality? Any patent must demonstrate novelty, industrial applicability and the involvement of an inventive step. The EPO has a strong reputation in establishing novelty. But it is alleged to be granting some claims for industrial applicability that are inappropriately broad, and granting patents whose inventive step is debatable. Such concerns are themselves hard to test. It would take years to see how many patents are successfully challenged in appeal. Much more useful, and more provocative for the EPO, is the idea that it submit a selection of recently granted patents for external peer review. In the meantime, the concerns are coming from many directions, and confidence in the patenting system is, for the first time, being shaken. Furthermore, patent professionals complain that the quality of incoming applications is now also low.
The EPO's new president, Alain Pompidou, a French biologist, needs to make a clear statement about the office's commitment to quality as soon as he takes over on 1 July. And he must indicate what measures the EPO is going to take to monitor quality. To ignore so much concern would be counter-productive, and would only fuel the smouldering scepticism. Anagrams, anyone?
Pressured staff 'lose faith' in patent quality
ALISON ABBOTT
[MUNICH] Examiners at the European Patent Office (EPO) are losing confidence in its ability to ensure the quality of the patents it issues, according to two separate staff surveys.
In a survey of some 1,300 patent examiners, conducted by the staff union in April, more than three-quarters agreed with the statement that productivity demands from the EPO's managers did not allow them "to enforce the quality standards set by the European Patent Convention". And 90% said that they did not have time to keep up to date with advances in their scientific fields. In a second survey of 730 examiners, done by the EPO itself, only 9% said they believed that the management was "actively involved in improving quality".
But Ciaran McGinley, head of the EPO's controlling office, says that commitment to quality is fundamental to the organization. He adds that the office is currently preparing a thorough report on its approach to quality, which will be presented to staff in the summer.
The number of patent applications processed by the Munich-based office has more than doubled since 1995 to over 160,000 last year. The mean number of hours spent examining each patent claim dropped from 23.8 hours in 1992 to 11.8 hours in 2001, the last year for which figures are available.
But some patent examiners privately contend that the pressure to process files encourages them to approve marginal cases, instead of formulating reasons for rejection. Internal quality controls, in which two other examiners check each patent immediately before it is granted, have also been eroded, they allege. "It is difficult to ask a close colleague to start checking a patent again when you know that he or she has as many files as you have to get through, and just as little time," explains one examiner, who did not want to be identified. In the union survey, two-thirds of respondents said that they lacked the time to do back-up examinations "in a satisfactory manner".
Outsiders have questioned the quality of recently granted patents. To qualify for a patent, an invention must demonstrate novelty, industrial applicability and an inventive step — but some are worried about the last, especially in fast-growing areas such as biotechnology.
"The bar for inventive step has been kept too low in genetic patenting," says genome researcher and 2002 Nobel laureate John Sulston of the Sanger Institute in Cambridge, UK. Sulston co-authored a report from the Royal Society published in April 2003, which raised concerns about patent quality. "Officers need plenty of time to consider carefully whether something is really an invention or not," Sulston says.
McGinley says that the EPO has had no complaints. "We've had no feedback from industry about inventive-step issues," he says.
Francis Hagel, an intellectual property manager with the French geoscience-service company CGG, near Paris, argued in April's Patent World that there was a "serious quality problem". Hagel also claims that the EPO has followed the commercial orientation of the US Patent and Trademark Office, and is treating its applicants as customers. He says that the EPO should instead be putting more emphasis on determining whether patents deserve to be granted.
Critics point out that the EPO gains fee income from each patent it grants. "Any incentive system that favours patent granting adds pressure to award a patent in marginal cases," says John Pethica, a physicist at Trinity College Dublin and a co-author of the Royal Society report.
McGinley counters, however, that the EPO's approach has cleared a backlog of applications, which he says was "bringing the EPO into disrepute".
How to sustain the reliability of the patenting system?
The need for scientists to establish priority for their discoveries is fundamental, but how they do it changes with the years. In the seventeenth century, scientists encrypted their results in anagrams embedded in clearly dated letters sent to colleagues.
Science publishing and patenting nowadays provide more transparent systems for establishing priority, but both are under pressure. In particular, patent offices everywhere have been swamped with applications since the revolutions in information technology, biotechnology and materials sciences, and have struggled to clear mounting backlogs. The European Patent Office (EPO) has coped by recruiting more examiners and by the driving productivity of its staff. But have productivity demands gone too far? Are patent examiners being pushed to work so fast, as they claim , that they can't deliver quality patents that would withstand scrutiny?
EPO staff are not complainers by nature, so they should be listened to, particularly at a time when external stakeholders are also voicing concerns. Many observers say that the EPO's commercial orientation overly favours the applicants as customers to be satisfied. Others point to the registration revenues to national patent offices from EPO patents, and say that this factor discourages governments from pressing for quality over quantity.
But what exactly do we mean by patent quality? Any patent must demonstrate novelty, industrial applicability and the involvement of an inventive step. The EPO has a strong reputation in establishing novelty. But it is alleged to be granting some claims for industrial applicability that are inappropriately broad, and granting patents whose inventive step is debatable. Such concerns are themselves hard to test. It would take years to see how many patents are successfully challenged in appeal. Much more useful, and more provocative for the EPO, is the idea that it submit a selection of recently granted patents for external peer review. In the meantime, the concerns are coming from many directions, and confidence in the patenting system is, for the first time, being shaken. Furthermore, patent professionals complain that the quality of incoming applications is now also low.
The EPO's new president, Alain Pompidou, a French biologist, needs to make a clear statement about the office's commitment to quality as soon as he takes over on 1 July. And he must indicate what measures the EPO is going to take to monitor quality. To ignore so much concern would be counter-productive, and would only fuel the smouldering scepticism. Anagrams, anyone?
Pressured staff 'lose faith' in patent quality
ALISON ABBOTT
[MUNICH] Examiners at the European Patent Office (EPO) are losing confidence in its ability to ensure the quality of the patents it issues, according to two separate staff surveys.
In a survey of some 1,300 patent examiners, conducted by the staff union in April, more than three-quarters agreed with the statement that productivity demands from the EPO's managers did not allow them "to enforce the quality standards set by the European Patent Convention". And 90% said that they did not have time to keep up to date with advances in their scientific fields. In a second survey of 730 examiners, done by the EPO itself, only 9% said they believed that the management was "actively involved in improving quality".
But Ciaran McGinley, head of the EPO's controlling office, says that commitment to quality is fundamental to the organization. He adds that the office is currently preparing a thorough report on its approach to quality, which will be presented to staff in the summer.
The number of patent applications processed by the Munich-based office has more than doubled since 1995 to over 160,000 last year. The mean number of hours spent examining each patent claim dropped from 23.8 hours in 1992 to 11.8 hours in 2001, the last year for which figures are available.
But some patent examiners privately contend that the pressure to process files encourages them to approve marginal cases, instead of formulating reasons for rejection. Internal quality controls, in which two other examiners check each patent immediately before it is granted, have also been eroded, they allege. "It is difficult to ask a close colleague to start checking a patent again when you know that he or she has as many files as you have to get through, and just as little time," explains one examiner, who did not want to be identified. In the union survey, two-thirds of respondents said that they lacked the time to do back-up examinations "in a satisfactory manner".
Outsiders have questioned the quality of recently granted patents. To qualify for a patent, an invention must demonstrate novelty, industrial applicability and an inventive step — but some are worried about the last, especially in fast-growing areas such as biotechnology.
"The bar for inventive step has been kept too low in genetic patenting," says genome researcher and 2002 Nobel laureate John Sulston of the Sanger Institute in Cambridge, UK. Sulston co-authored a report from the Royal Society published in April 2003, which raised concerns about patent quality. "Officers need plenty of time to consider carefully whether something is really an invention or not," Sulston says.
McGinley says that the EPO has had no complaints. "We've had no feedback from industry about inventive-step issues," he says.
Francis Hagel, an intellectual property manager with the French geoscience-service company CGG, near Paris, argued in April's Patent World that there was a "serious quality problem". Hagel also claims that the EPO has followed the commercial orientation of the US Patent and Trademark Office, and is treating its applicants as customers. He says that the EPO should instead be putting more emphasis on determining whether patents deserve to be granted.
Critics point out that the EPO gains fee income from each patent it grants. "Any incentive system that favours patent granting adds pressure to award a patent in marginal cases," says John Pethica, a physicist at Trinity College Dublin and a co-author of the Royal Society report.
McGinley counters, however, that the EPO's approach has cleared a backlog of applications, which he says was "bringing the EPO into disrepute".
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