THE PCT SEARCHING AUTHORITIES: A TWO-SPEED GROUP?

Following the last post where I focused on the recent proposal by the Indian Patent Office for a free-choice of the International Searching Authority by applicants, in this post I am going to deal with several issues concerning the International Searching and Examining Authorities and how the implementation of the Indian proposal would affect the present status quo.

While nowadays there are 23 national or regional patent offices appointed as International Searching and Examining Authorities, as the last post pointed out , it is possible to divide this group into several subgroups. I am going to focus on two of them; on the one hand on the so called IP5 and on the other hand on the Contracting States to the European Patent Convention linked to the European Patent Office.

The five big Patent Offices, the so-called IP5, are the Patent Offices of the USPTO, the European Patent Office, Japan, South Korea and China. Their figures dwarf those of the other Offices, including the other International Searching and Examining Authorities. The IP5 account for 80% of all patent filings worldwide and 95% of all the work done regarding the PCT. It would be even possible to define two subgroups within the IP5, depending on the number of patent examiners: the Korean Patent Office has 900 patent examiners and the Japanese one 1,696, whereas the European Patent Office has 4,400, the USPTO 8,185 and the Chinese Office 11,421.

Images from the USPTO, The European Patent Office and the SPTO.

Besides, a very active cooperation among these big Offices has given birth to a very attractive product: “the collaborative search and examination”, something unprecedented and not straightforward to compete with. It is still a pilot project, but it is essentially a search and examination carried out by all the IP5 Offices.

This article recently published by the Chilean INAPI provides information on the reduced magnitude of the applications filed and the work carried out in the other International Searching and Examining Administrations. Among the small Offices, those with the highest number of patent examiners are probably The Russian Office (Rospatent), the Indian Patent Office (526 examiners), and the Brazilian one (INPI), the latter with over 350 patent examiners.

The big Patent Offices are well aware of their predominance over the others and actually in 2014 they put forward a proposal (see document PCT/MIA/21/3) in order to amend the minimum requirements to become an International Authority. This document explains the need to increase the minimum number of patent examiners (now 100) and a figure of 1000 was suggested. If that amendment were accepted, the only remaining International Searching and Examining Authorities would be the IP5 ones.

In fact, the European Patent Office (E.P.O) has never concealed its ambition to become the only Patent Office, the Global Office. Its former president Battistelli already stated such a goal some years ago and nowadays the E.P.O has embarked on a campaign to sign validation agreements with as many countries and organizations as possible: including countries and regional organizations such as Laos, Cambodia, Moldova, Tunisia, Morocco, Angola, OAPI, Georgia and Jordan.

If the Indian Patent Office’s proposal, commented in a previous post, came into force, and a “free market” of International Searching Authorities were implemented, without the constraints currently established by the bilateral agreements with WIPO, several elements would play a relevant role in the competition: Quality,  Price and Language mainly.

COMPARATIVE TABLE OF PRICES (€), AND WORKING LANGUAGES OF THE PCT INTERNATIONAL SEARCHING AUTHORITIES

Patent Offices Search Fee (€) Languages
Austria 1775 English, French and German
Australia 1376 English
Brazil 517 (in paper), 392 (online) English, Portuguese and Spanish
Canada 1061 English and French
Chile 1770 English and Spanish
China   277 English and Chinese
South Korea 1016 (English), 351 (Korean) English and Korean
Egypt   203 English and Arabic
Europ. Patent Office 1775 English, French, German and Dutch
Spain 1775 English and Spanish
Finland 1775 English, Finnish and Swedish
Israel   874 English
India   127; 32 (individual) English
Japan   557 English and Japanese
Russia   540 (English); 115 (Russian) English and Russian
Singapore 1463 English and Chinese
Sweden 1775 English, Swedish, Danish Norwegian, Finnish y French
USA 1842 English
Turkey 1775 English and Turkish
Ukraine   300; 100(Russian or Ukrainian) English, Ukrainian, Russian, French y German
Nordic Institute 1775 English, Danish, Icelandish, Norwegian y Swedish
Visegrad Instit. 1775 English, Hungarian, Polish, Czech y Slovak.

There are some offices that work in languages not available from other Authorities. This favours small and medium size applicants that do not want to invest in a translation at an early stage. Nevertheless, this competitive advantage for some small offices is bound to disappear in the short to medium term, as machine translations are increasingly improving.

Of course, price is another element of competition that already plays a significant role. The SPTO (Spanish Patent and Trademark Office) like other International Searching Authorities from Contracting States to the European Patent Convention has its fees aligned with those of the European Patent Office due to the “centralization protocol”. Regarding the fees listed in the table above, it is well known that the International Authorities apply all kinds of discounts or grant subsidies; in the case of the SPTO, for instance, nationals or residents of one of the “low income”, “lower middle income” or “upper middle income” countries enjoy a 75% discount in the search and preliminary examination fees.

Likewise, as another measure to enhance the advantages for the Spanish applicants  of designating the SPTO as the International Searching Authority, a new instruction by the SPTO’s Director has been published establishing that the applicant can obtain a 100% or 50% reimbursement of the search fee when the International Search Report can be based totally or partially upon the search report already drafted for the Spanish national procedure.

As far as quality is concerned, the key to a high-quality prior art search and examination lies undoubtedly in a proper specialization. It is quite hard to try to compete with the figures of patent examiners shown by the so called IP5 Offices.

Nevertheless, a figure of around 100 patent examiners could provide high quality search and examination if a series of conditions are met:

  • A proper distribution of qualified examiners in the different technical specialties.
  • Stability of the examiners in the job, since specialization is achieved through experience.
  • Allocation of enough time for every file that must be searched and examined.

Even though it is true that a Quality Management System is one of the minimum requirements that Patent Offices must comply with in order to be appointed International Searching Authorities (See chapter 21 of the PCT search and preliminary examination guidelines), the search report and written opinion (the core business of patent offices) are products whose “quality” is not straightforward to measure.

Undoubtedly, the key to achieve a high-quality prior art search and examination is a proper specialization of patent examiners and the availability of powerful search tools. Regarding the latter, the increasing availability of AI-based search tools can further widen the gap between the IP5 and the other Authorities. While all the IP5 developing AI-based search tools, the smaller Offices cannot gain access to them unless they make a big investment.

One of the main problems that Patent Offices face is the high turnover of patent examiners. The job of “patent examiner” is very peculiar. It requires a very high intellectual effort and the higher the specialization the higher the risk of falling into monotony. Considering the qualifications needed for the job, the wages paid are usually low/middle.

The European Patent Office has managed to solve this problem of a high turnover of the workforce through very generous salaries that compensate the negative facets of the post. That is probably its key to success, to its top position in quality rankings, even though lately this image has been slightly damaged by an increase in production.

Conclusion

It is crystal clear that turning into a PCT International Searching and Examination Authority is something coveted by most patent offices. Nevertheless, a large percentage of the smallest Authorities find it increasingly difficult to compete with the biggest ones, such as the IP5, and the implementation of the Indian proposal would probably further increase competition and widen the gap in this two-speed group.

En español

Leopoldo Belda-Soriano

Proofread by Ben Rodway

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