The very low employee turnover (less than five percent) at the EPO and JPO is evidently correlated with longer average experience of the typical examiner, especially when compared to the USPTO. An examiner at the EPO is recognized as fully operational after five years of training and experience. Since the examination process is complex, technical, and legally binding, examiners with longer experience should deliver higher-quality service on average. At the USPTO, almost 80 percent of patent examiners had less than three years of examining experience in 2009, while the share of examiners with more than 10 years fell from 20 percent in 2004 to seven percent in 2009.
This decline is the result of the aggressive recruitment of new examiners by the USPTO, and a significant reduction in the number of experienced examiners (from about 750 five years ago to about 400 today). Others have found that examiners’ characteristics, including their experience, significantly influence the outcome of the examination process, which is an unexpected, socially-suboptimal effect.
The extent to which examiners interact is one aspect of the examination that implicitly affects an examiner’s ability to assess the degree of inventiveness of a patent. A survey showed that examiners perceive their work as highly interdependent. In other words, poor-quality work undertaken by one examiner increases the workload of that examiner’s colleagues. In this respect, the EPO has a well-defined, unique practice that consists of having a division that makes the decision to grant a patent. A division involves three colleagues in the examination process: the first examiner, the second examiner, and the chairman. This organizational routine constitutes a key quality-check in the EPO process, and institutionalizes substantial interactions between examiners.
At the USPTO, the examination is generally performed on the individual level. Evidence of heterogeneity across examiners in their examination processes has been shown, relating to experience, tenure, and other characteristics. Some have asserted that there are strong structural and psychological pressures on examiners to issue patents rather than rejecting applications, no matter how weak the alleged invention seems.
In the US, the relatively-low quality or rigor of the examination process (due to the high turnover of examiners, the heavy workload per examiner, the soft identification of prior art, and (until recently) the lack of an opposition process) that is associated with low fees, and the fewest number of restrictions on patentable subject matter, have probably led to a very high propensity to patent as part of an IP strategy, as it is easy and inexpensive to get a patent granted and obtain intellectual-property rights.
Even if this indicator is subject to some measurement errors, the USPTO’s corrected grant rate of 87 percent to 97 percent makes it the most applicant-friendly. This high propensity to patent probably has given rise to increased backlogs. At the opposite end of the spectrum is Europe, where a thorough identification of prior art, associated with high rigor in the examination process and high fees, has led to relatively low demand for patents and a less worrisome backlog. Japan is in an intermediate position. For some components of its operational designs, Japan’s intellectual-property rights framework is closer to the US, while it is closer to Europe for others.
The relative ranking of the EPO being superior at identifying relevant prior art versus the USPTO is largely based on the staff characteristics obtained from the analysis which are detailed below. However, there is also an aspect of obligation which for the EPO is almost diametrically opposed structurally to that of the USPTO. In the EPO, determining the closest prior art to an invention under examination is the duty of the examiner. In the USPTO, this obligation is (to a large extent) the duty of the applicant – to disclose all material in one’s possession pertinent to patentability.
In the case of the EPO, in order to maintain quality, it is in the office’s interest to develop examiners with a strong knowledge and discernment of the prior art. In the case of the USPTO, while the same aspirations apply, the incentive is less because the burden of responsibility is reduced. As some patent attorneys like to say what the USPTO doesn’t get right in prosecution, the courts will correct in patent litigation. It also can create a biased disclosure of prior art by the applicant due to the context of the IP strategy. Since the applicant may know the technical field very well, conflicting interests may cause either incomplete disclosure based on a determination that certain art is not relevant, or an inordinate amount of disclosure in an effort to conceal details by overloading an examiner.
Perhaps in between the two approaches, the JPO outsources the prior-art search activity to firms and retired examiners. Thus, JPO examiners only examine what they are given, and must “learn” the prior art that is found for them before proceeding with examination.
The concept of quality is defined by van Pottelsberghe as the extent to which patent offices comply in a transparent way with the main legal standards that rule patentability conditions in their jurisdictions. The methodology consists of a two-layer analytical framework composed of “legal standards” (first layer) and their “operational design” (second layer).
The degree to which a legal standard is satisfied, as van Pottelsberghe proposes, depends on the operational design put in place by the patent office. Significant divergence in operational designs can lead to different degrees of quality (or rigor) in complying with patentability conditions. Accordingly, four main legal standards for patentability were chosen to be modeled: subject matter (restrictedness), novelty (thoroughness), inventiveness/obviousness (rigor), and fees (affordability).
Patent offices have similar codified rulings related to the novelty and the inventiveness requirements for obtaining intellectual-property rights. Therefore, an in-depth analysis of the operational designs put in place to comply with these requirements must be performed in order to assess quality. Several components of the operational designs of the novelty and inventiveness requirements have been identified.
Firstly, a country’s legal standards and the components of patent offices’ operational design interact with each other, and form a coherent system. For instance, the soft identification of prior art (or incomplete search reports for the novelty legal standard) may undermine the inventiveness legal standard. Similarly, the patentability of controversial subject matters (such as business methods as part of an IP strategy) affects the quality of search reports because prior art for these subject matters is not accessible or is imperfectly codified.
