- Data.Gov: As part of the transparent government project, we now have the website Data.Gov with the purpose of “increas[ing]public access to high value, machine readable datasets generated by the Executive Branch of the Federal Government.” So far, the PTO has only included two datasets -both of which were already available through the PTO website. Hopefully there will be more to come – including opening access to PAIR. [More here].
- IP Colloquium: Professor Lichtman has released a new edition of his audio-program IP Colloquium. This month’s program focuses on reforms of the patent damages laws. [LINK] The program offers CLE Credit.
- Deferred Examination: Comments on a potential deferred examination program are here.
- Deferred Examination: Intel’s comments are interesting. The company argues that the success of deferred examination in other countries is a facade. Rather, the high rate of drop-out during prosecution in countries such as Japan, Germany, and Korea is due to the inventor compensation schemes in those countries. So the story goes – companies in those countries tend to file more low-quality local patent applications for the purpose preempting inventors from asserting rights on their own.
“We actually believe that the reason that deferred examination has had little success in the United States is due to the inventor compensation schemes that exist in many countries such as Japan, Germany and Korea.
In essence, under the regimes in these countries, if the company fails to patent the invention, the inventor has the right to file on his or her own behalf. Having inventors file on their own behalf is generally viewed as undesirable. As a result, the companies file disproportionately more applications in their home jurisdictions than normal prudence would otherwise suggest. Since they are filing these in part to pre-empt the inventor’s rights and to avoid having additional inventor compensation issues, we believe that this contributes to an inclination to avoid paying the examination fee and then to abandon the patent application.
However, outside their home jurisdictions, these companies have a tendency to file a fraction of the patents that they file in their home jurisdictions. Having filed in the home jurisdiction, they have little or no concern that the inventor has the right or will file the application overseas. Apparently, as a result, they do not appear to abandon nearly as high a percentage of the patent applications that they file outside their home jurisdictions as they file in their home jurisdictions.
Of course, the US does not have such inventor compensation statutes. Those foreign companies that file and abandon so heavily in their home jurisdictions exhibit radically different behavior in the US. They file less and abandon much less. Hence, we believe that this helps explain the disparate experience of deferred examination in other countries. It means that the practice in these other countries is not likely to be a good indicator for practice before the USPTO.”
Brilliant update!! I liked the way you have presented various things togther in a beautiful manner.
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Ah Mr Katznelson, I see you are reading today. So, as you offer nothing more, I assume that our dialogue on this thread has run out of puff.
Mr Katznelson, are you there this morning. Any thoughts on the posting immediately above?
Sorry Mr Katznelson, that only now have I seen your piece above.
In Europe, patent law displays a heirarchy of law. Top is Paris, then PCT, then EPC, then national law. Each lower tier has (written in to it) that it must comply with all higher tiers. So, let’s look at Paris.
Paris says that an applicant can enjoy a right of priority for 12 months. That’s all that’s going on here.
The wholesale abandonment occurs at 12 months. That’s 6 months before the things could otherwise have been A published. What survives to A publication is what Applicant intends to take through to issue. Take a look at Art 64 EPC: those WO and A publications put readers on notice of impending infringement. Owners of those A publns have to wait till issue till they can come gunning for infringers, but when they come gunning, they will be looking for their statutory right to “compensation” back-dated to the date of A publication.
You think it’s expensive to file in Europe? Ever looked at the length of these things? Have you got stats on what Applicants typically pay their patent attorneys for such filings?
When the whole European system has got accustomed over 100 years to short disclosures aimed at the person skilled in the art, it finds short specifications nevertheless enabling and sufficient, and looks at US drafting as over-blown, unnecessarily lengthy and there just so lawyers can really bill out big.
The new EPO rules on divisionals will play havoc with those who aim to define their inventions for the first time only after X yearshave elapsed since the app was filed. Paying for quality drafting would be a good idea from now on. Better: file a pro, get a good search, then at the end of the Paris year file a good quality app with optimal knowledge of what had been published before your claimed priority date.
Does that answer?
MaxDrei,
Good points. I agree with all your characterizations above and believe your reasoning and observations to be consistent with statistical data I have seen and published in my Deferred Examination Model paper linked above. Your conclusions that “a minority of [priority] Applicants choose to file at the EPO, perhaps to get a quality search report within the Paris year” are indeed supported by the evidence: (a) only 9% of EPO applications are first-filing priority applications; and (b) a significant (minority) fraction, of those are abandoned after receiving a search report prior to publication, thereby preserving secrecy.
I also agree that outside of the US, where deferred examination is the rule, “all those prio filings cause no mischief to anybody, and their wholesale abandonment doesn’t trouble anybody either.” This, only to the extent that it is publicly clear early enough that they are abandoned and do not constitute “false notice” for innovators to spend resources on looking for “design-arounds.” That said, I believe that this process, which necessarily results in excessive filings and “wholesale abandonment”, is costly for the applicants and I much prefer that US applicants would not be forced to adopt these tactics in the USPTO under a proposed shift to First-To-File. – But you already know my position on proposed FTF in the US…
I am curious, however, about the practice of filing an EPO priority application that is subsequently abandoned and followed by another application claming priority to the first-filed EPO application. Under what EPC rule is that done and how will this practice survive this year’s new EPO rules limiting secondary filings?
To Ron Katznelson, on rates of abandonment, may I ask, what do your stats show, in relation to my assessment of how filing works outside the USA, as follows:
In Europe, it is routine to file a prio application then, at the end of the Paris year, a non-pro at the EPO and beyond Europe (PCT or USPTO) that includes a declaration of the pro prio. Prio applications are mostly national (DE, say) but a minority of Applicants choose to file at the EPO, perhaps to get a quality search report within the Paris year. Either way, at the end of the Paris year, all those Applicants decide either to proceed or to abandon the patenting program.
If they decide to proceed, they neverthelesss abandon the prio application. Since its legal effect is preserved in the non-pro filing, there’s no point in maintaining it.
Unless the EPO is called upon to search during the Paris year, all those pro prio filings cause no mischief to anybody, and their wholesale abandonment doesn’t trouble anybody either.
Am I right, that your stats show a rate of abandonment at the EPO that is a little bit higher than at the USPTO but much lower than the national abandonment rates in DE, JP, KR. May I ask, is my explanation consistent with your stats?
Paul Morgan,
A substantial decline in JPO requests for examination was expected, as this year is the first year that the JPO receives no more examination requests deferred for seven-years under the old rule. The change from seven-year deferral to three-year deferral is effective for applications filed after October 2001. Thus, the seven-year and three-year application groups’ overlap that caused a “bubble” ended last year.
Hal Wegner just reports that: “Japanese patent examination requests for the first quarter of calendar year 2009 are down 30%. The examination request in Japan represents the first major government fee in the life cycle of the patenting process.
Initial filings are down 7 %.
(Each figure is compared with the first quarter of calendar year 2008. The information has been provided by a reliable source with access to government figures.)”
Good point, Ron. We should both get back to debating the subject of this thread.
Erez, I resist that. It’s not DOE but, rather Article 69 EPC and the Protocol thereto. “robust DOE” is, sorry, an oxymoron. Europe now has a clear rule for setting the scope of the claim. Construe the claim in the light of the specification. Then, first, deliver reasonable legal certainty to the public but not at the expense of sacrificing a scope of protection to the inventor which is “fair”. It’s tough, to steer accurately between those particular and very exacting and explicit Scylla and Charybdis rocks, but the patents judges in Europe are ever more expert navigators.
Max Drei, is it possible that one reason that German applications are more concise and easier to write because the Germans have a robust DOE?
When you have DOE, you can concentrate on describing the core concept of the invention (pith and marrow, if you will) and you may have less need for permutations and repetitions to ensure reasonable scope of the claims.
MaxDrei,
You seem to deviate from the main theme here by arguing a tangential issue of patent quality. Just stick to an objective concept of higher abandonment or dropout rate: The higher dropout rates are NOT because of Intel’s theory, but because of the lower survivability nature of the applications filed under FTF. Right? Can you acknowledge this simple fact without changing the subject to German patent law or quality? Do you think employer compensation is any different for those “pure” FTF EPO applications that drop out at a 58% rate than that of all other EPO application which only have a little more than 10% dropout?
But you already know the answer: Intel’s theory is simply unsupportable.
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Ron Katznelson wrote:
” Like 6, I have frequently been impressed with the technical quality of German priority applications, although some may have been drafted without the benefit of prior art search and may not have disclosed best modes or ultimately commercially viable solutions”
Ron, most are written for a German company. Most German companies monitor the stream of A publications in their industry. As to “Best Mode” it is not a requirement of the law outside the USA (ROW) so you might not find every German patent attorney taking every care in every case to include it. But ROW law does require that the disclosure be enabling over the width of the claim. So that’s what ROW patent attorneys have in mind when they i) frame their claims and ii) write their specifications. That their filings are of reasonable quality is hardly a surprise then, is it? It is a consequence of the way the patent statute is set up.
You observe that the German filings might not disclose “commercially viable” solutions. Given that they are to establish the earliest possible legal priority date, this is not really surprising is it? Is this just a neutral observation of yours, or do you see this as a defect in such patent applications? How about adding an additional criterion “commercial viability” to the existing 101,2,3,12 patentability tests?
Broje: now you can begin to get an inkling why some DE/JP filings are quite concise, and look as if they were put together in just an hour or two of attorney time (and cost no more than that too!).
Readers, there is a puzzle here, right. On the one hand, German companies have to file on every little darn thing, just in case it later turns out to have some commercial significance. So their specifications are often hastily put together, and paltry. Yet, it seems (see above) they are nevertheless of high “quality”. How can that be? Could it be that US-originating apps drone on and on with multi-pages of waffle, either because the attorney has all the time in the world to bring it to the PTO, so like a work of art it’s never quite perfect, or because he has a time sheet on which he must bill a minimum 10 hours, every working day of the week?
The URL above should has an extra period. The correct URL is link to works.bepress.com
Good comments from all.
MaxDrei, I agree with your clarification stating: “On the day when the employee makes his/her invention disclosure to you [employer], how do you know whether it’s gold dust or dross? If it’s gold, and you don’t file, that might turn out very expensive indeed. But you can file a pro for less than 10k and then decide, 10 months later, whether to i) give it to the employee ii) press on to A publication or iii) file a proper non-pro internationally and go for a granted patent.” This means that upon such filing in Germany (under First-To-File priority law), there is substantial uncertainty as to the ultimate fate and merit of the application. (If Dennis calls these “low quality” applications, it is not meant as anything other than lower probability of survival to examination. Like 6, I have frequently been impressed with the technical quality of German priority applications, although some may have been drafted without the benefit of prior art search and may not have disclosed best modes or ultimately commercially viable solutions).
Coupling this explanation with Paul Morgan’s insightful comments and the important observation of Interloper on Australia, which has no inventor compensation schemes, leads to a much simpler explanation: Evidence shows that patent offices having high abandonment rates under deferred examination have high fractions of applications filed under First-To-File priority pressures. This is discussed in the Appendix to my comments on Deferred Examination at link to works.bepress.com. Thus, Intel’s belief that the USPTO will not see nearly as much abandonment under deferred examination as experienced in Japan, Germany and Korea is very likely correct but *not for the reasons that their unsupported “inventor’s right preemption” theory suggest*.
Whereas evidence shows that fee differences can account for several percent in abandonment rates, other evidence shows that the primary factors affecting dropout rate are the maximum deferral period and the FTF Ratio for the respective patent office. I define the “FTF Ratio” of a given patent office as its share of first-filings under First-To-File priority in the total application pool of the national patent office. Applications that claim priority to an earlier date than their filing date are not FTF priority applications. For example, because domestic application filings under Japan’s first-to-file regime dominate applications at the JPO, the FTF Ratio at the JPO has ranged between 0.91 to 0.85. The estimated FTF Ratios in 2004-2006 at the German PTO and the Korean PTO were 0.79 and 0.76 respectively, whereas the FTF Ratio at the EPO has been far lower, only 0.09. This, and the shorter deferral period, explains why overall abandonment at the EPO is less than 10% as opposed to more than 35% in Germany, Korea and Japan. My paper also presents evidence that the minority “pure” FTF filings at the EPO result in 58% abandonment prior to examination.
The FTF Ratio at the USPTO is zero because under the First-To-Invent-with-strong-grace-period law, the actual legal priority date of an application is earlier than its filing date and because U.S. applicants do not “race to the patent office” shortly after the conception of an invention to establish a legal priority date. Moreover, foreign applicants at the USPTO claim earlier priority to their foreign application. Thus, the USPTO receives more mature applications and the survival probability of applications at the USPTO is expected to be higher than that of the EPO, JPO, GPTO or KIPO. Based on this and some other information, my paper estimates that 8%-11% of USPTO applications will be dropped under a three-year deferral system. However, the paper estimates that workload savings would be much higher (up to 25%) because of dropped claims prior to examination in surviving applications.
“When employer publishes without filing, he is (I would imagine) in breach of his duties under the law.”
That’s just huge. If true, then a company can’t do a press release or anything without filing a patent first. But I imagine they just have to tell the inventor ahead of time so he can go file his own application before they do the press release. But does the inventor have to tell them whether or not he filed on it? It sort of puts a lot of pressure on companies to file on any new feature of even dubious patentability, even if they would rather just defensively publish and move forward without filing.
Idk max, but in my short stint in industry, and even as the lowest man on the totem pole I came up with several ideas for processes which would pass 101, and maybe would even pass 102/103. Filing on all those ideas simply to block me from ever getting a patent on them later seems a bit… um, how do you say? Prohibitive in cost.
6, Broje: You should think on the cost to the employer of NOT filing. On the day when the employee makes his/her invention disclosure to you, how do you know whether it’s gold dust or dross? It it’s gold, and you don’t file, that might turn out very expensive indeed. But you can file a pro for less than 10k and then decide, 10 months later, whether to i) give it to the employee ii) press on to A publication or iii) file a proper non-pro internationally and go for a granted patent.
Broje, I thought we had answered your point. the answer is YES. Employer has a duty under the law to protect the invention, or give the inventor the chance to protect it. Thus, when Employer decides, years later, to stop paying annuities on the app pending at the EPO, he has to give the inventor time to take back the pending app, in his/her own name, as a going concern. When employer publishes without filing, he is (I would imagine) in breach of his duties under the law.
What I want to know is, if German law requires a company to either file on the inventor’s disclosure or let the inventor file on it, what is to stop the company from just posting the invention disclosure on the Internet to prevent the inventor from being able to patent it? For example, is there a provision that requires the company to maintain the invention disclosure in secrecy and not practice defensive publication?
If 1-3 is worth 10k dollars or however much it’ll cost to file then more power to them.
6: J/P might want to add something but here goes, from me, for Germany:
1. The prior art effect of Art 54(3) EPC, dating back to the prio date, is not available with a mere publication.
2. File at the PTO and it’s published 18 months later. Why reveal all to your competitors in Jan 2009 when you can do it just as effectively in July 2010, through the PTO?
3. Your employee inventors get no satisfaction/motivation from publn. They want pat applns.
“Even though abandoned early though, they are still 100% effective to neutralise all the applications filed by a competitor, on the same subject matter, even just one day later. Well worth the modest filing costs then, eh?”
Why not simply publish those same papers online somewhere that google can see them from?
Note that Prof. Lichtman’s opinions will not vary on the subject of damages than any other Prof. with links to Big Firm (let alone the “Scholar in Residence” – oh brother).
Forget he is a professor. Analyze the arguments, then think what would Big Firm want. Then, remember he is a professor at a “prestigious” law school (I don’t know, i think UCLA, and Yale are ok schools) and then understand the motivations.
I am generally not a fan of Ad hominem, but sometimes when the BS is just that pervasive, I think its necessary to look at motivations. For example, if I were to take a policy stance on something the GOP would support, would you not question my motivations?
Thanks J/P.
So, readers, anybody still wondering why there are so many utility patent applications filed in Germany by German Big Corp, or in Japan by Japanese Big Corp?
….and why these same filers take so few of their domestic filings outside their home jurisdiction.
…..and why so many of those domestic filings get abandoned early, and don’t make it through to issue.
Even though abandoned early though, they are still 100% effective to neutralise all the applications filed by a competitor, on the same subject matter, even just one day later. Well worth the modest filing costs then, eh?
I agree with MaxDrei that, to motivate the inventors, it is difficult for a manager to make a decision not to file. In other words, the manager does not have motivation to make a decision not to file. This is because the company does not have any concrete idea to evaluate and manage its patent portfolio. Therefore, the easiest decision for the manager is to file patent applications as many as possible. Without the corporate policy to evaluate and manage the patent portfolio, filing many patent applications could be evidence of the successful management.
Of course, I also agree that the company has some sort of pressure to file the patent application by the “compensation” clause of the JP patent law, because the compensation becomes more if the company files the patent application than not to file.
Opening access to PAIR would be big help. Particularly if the documents were OCRd with permanent URLs.
Good to know, J/P. Thank you. I had no idea that JP law does not echo the German requirement to file. Japanese companies do file a lot though, don’t they. Is that because it is difficult for a manager to make a decision not to file. Might such a decision de-motivate all those hard-working inventors?
The Japanese Patent law is not a copy of the Germany one, although it is true that the principal of the Japanese patent law came from German.
In Japan, a company can execute an agreement with its employees so that the employees must assign to the company their inventions made during the course of their jobs. In that case, the company has to pay compensation to the inventor in accordance with the benefit obtained from the patent (i.e., only after the patent is issued). But the company has no obligation to file an patent application (in this case, the company does not have to pay the compensation).
Therefore, to me, the Intel’s comment doesn’t make sense at all…
Mr Morgan, When I wrote that Japanese law is “copied” from German, I was in the thread, and thinking specifically of the law in relation to ownership of patentable inventions made by employees. I agree straightaway that, in matters of validity, JP patent law is different from German.
As for American corporate filers, I assume they know what they’re doing. If they don’t file outside the USA, it must be for a good economic reason.
Outside the USA, as you advert, if you’re not first to the Patent Office with a disclosure that enables, then you’re second. 18 months later, both you and the other fellow get A published (or WO). The full horror of your position is suddenly laid bare. You’ve no patent, and are likely infringing the other fellow’s. You had perhaps better not ask too many questions. Augen zu, und durch! Perhaps.
Since it was noted above that Japanese patent law has been based on German patent law, it is important to note that that does not mean that it is, or will be, interpreted as it would be in Germany, rather than given a uniquely Japanese cultural flavor in actual practice. Treatment of “novelty only” prior art is one example.
—————-
As for the private and national interest of Japanese companies in protecting their product exports by low cost early filed and published patent applications, which can [optionally] be deferred and/or abandoned before examination, perhaps if Americans were also more conscious of the importance of protecting exports we would not have quite such a horrendous foreign trade unbalance, even with all our foreign-gas guzzlers?
[Filing first gives better defensive protection everywhere outside of the U.S. than it does in the U.S., where we have In re Hilmer, and inadequate 131 declarations are too easily accepted.]
Mr Morgan, the Paper from Nancy Linck addresses these issues. Like me, she suggests de-coupling search and examination. Unlike me, she suggests giving Applicants 5 years before they have to stump up the search fee. She knows that searching is time-consuming, so the only way to rid the PTO of the backlog is to let it off the searching hook. That’s a cop-out however. A publications with claims that cover the world are relatively harmless when they include a search report with 10 X references. Without any search report they are unnecessarily scary, and a deterrent to innovation in the marketplace.
Mr Morgan, on EPO delay you are just as incorrigible as all the rest. Why does hardly anybody ask the EPO for accelerated handling of their apps. It is free of cost and no reason need be given. I’ll tell you. Because most Applicants LIKE having their apps pending for years and years. Those pending apps deter the competitors, but cost only the annuities. And for as long as they’re pending, the claims are soft putty, still to be baked into the shape of the product from the competitor, when it finally appears on the market.
If you want the EPO to go fast to grant……just ask.
But 6, the Japanese patent law is a straight copy of the German one. Does that mean that the JP-originating cases are as good as the German ones? Or might there be some special ingredient that is present in Germany but not in Japan? But you’re not serious, are you. You’re just trying to wind up your readers again. We can see through all that, you know.
Unless maybe it’s that First to File raises Quality. You only get one chance to file, so it had better be an adequate disclosure.
Or is it that Germans search, do FTO, file in the USA only a year after first filing in their home country, and only when they think the money is well-spent?
Since the point of a U.S. deferred examination would be to reduce examiner delays, and since the U.S. does not have preliminary examinations for national [non-PCT] applications, presumably the deferred applications would be published without any prior search report or examination [as almost all are now anyway], thus allowing deferral of both, and thus deferral of both fees. That potential fee savings would then become another incentive to later abandon the deferred application in view of obsolesence, etc.
———
P.S. I cannot resist the cynical comment that the EPO does not need a deferred examination system because it is so very slow already [and meanwhile collecting fees for years before any actual patents issue].
But at least in the EPO the preliminary search report and the de facto EPO bar against later generic claim broading without clear spec support [not just species] can give someone a better guess as to what kind of claims may ultimately issue than any U.S. published application.
Which is why some people want to have third parties to be able request and pay for search and examination of any deferred applications. [But that would dangerously tip off the patent owner that someone else has an interest in that application, and they would logically devote extra efforts to get good claims allowed.]
P.P.S. the above-linked Professor Lichtman 1 hour audio-program IP Colloquium on the current U.S. patent damages law can of worms was very good.
“Some point from a german guy on Employee-Inventor Statute:
The general process is:
1. Inventor files invention report
2. company takes invention or leaves it with the inventor within 4 months (there was the fine tuning reported above: now the invention is automatically taken if the company is not rejecting it actively).
If the company takes it:
3. The company is oblieged to file an patent application.
4. The company has to pay compensation to the inventor if the invention is used. This is even before the patent is granted.
The Statute recommends a paying scheme similar to a license.
5. If the patent is rejected the compansation must not be paid.
The whole Statute concerning the compensation is designed to give the companies a headache if they try to follow it and gives the (often former) employee some leverage to press the companies to high compensations.
In real life bigger companies tend to pay a lump-sum to the employee and buy themselves free of most of the the laws traps. Most employees are happy with what they get and never ask again.
In Germany the patent lawyer association and bigger companies would have liked the reform to turn the Statute to a lump-sum-compensation and free the Statute of the regulations that need high administration efforts but the legeslative body was not following their advice.
”
I knew there had to be a reason that German foriegn priority apps are always the best ones I see. Even when I reject them they’re always well written, and have some technical merit to the claims etc. etc.
So, readers, there you have it, from German patent guy:
“If the company takes it:
3. The company is oblieged to file an patent application.”
As to why the EPC, we have a classic story of getting to the right destination by pure accident.
By “destination” I mean that protracted dialogue, between Examiner and prosecuting attorney, becomes a rarity rather than a routine feature in a high proportion of cases pending. A good system needs an A publication, 18 months in, that includes a top quality search report and (optionally, but even better) an opinion on patentability from an Examiner at a Patent Office with 35 Member States. Applicant mulls the docs and so do its competitors. Competitors ask their patent counsel (for FTO is a useful exercise, in a world controlled by Article 123(2) EPC) “Is he going to get anything useful to issue” and Applicant asks its patent counsel “Can I get anything useful through to issue?”. Depending on the answers, competitors come early and boldly to market with new products (or they don’t) and Applicant often abandons, rather than pay annual maintenance fees and a whopping exam fee to the EPO. And so it comes to pass, that protracted dialogue between Applicant and an EPO Examining Division is a rarity.
Shall we see any or all of this, if deferred examination arrives at the USPTO? No chance of separating the search fee and the exam fee, I suppose? No chance of introducing annual maintenance fees on pending apps, I suppose.
As an add on to the Defered Examination Discussion:
In my view the high level of national applications is reasoned in Germany in one main aspekt:
The Germans file their priority application in Germany, the most important applications are transferred to international level.
Addiationally the German applications may interfere with a European Patent Application – So most of the patent applications that are brought from a German to an European level are brought “on hold” by the applicant and postponed until the European application is decided (which will be effective in Germany as well).
Some point from a german guy on Employee-Inventor Statute:
The general process is:
1. Inventor files invention report
2. company takes invention or leaves it with the inventor within 4 months (there was the fine tuning reported above: now the invention is automatically taken if the company is not rejecting it actively).
If the company takes it:
3. The company is oblieged to file an patent application.
4. The company has to pay compensation to the inventor if the invention is used. This is even before the patent is granted.
The Statute recommends a paying scheme similar to a license.
5. If the patent is rejected the compansation must not be paid.
The whole Statute concerning the compensation is designed to give the companies a headache if they try to follow it and gives the (often former) employee some leverage to press the companies to high compensations.
In real life bigger companies tend to pay a lump-sum to the employee and buy themselves free of most of the the laws traps. Most employees are happy with what they get and never ask again.
In Germany the patent lawyer association and bigger companies would have liked the reform to turn the Statute to a lump-sum-compensation and free the Statute of the regulations that need high administration efforts but the legeslative body was not following their advice.
Good point from The Interloper. When Europe had to choose whether to write Deferred Examn into the EPC, it chose not to. Nancy Linck quotes the reasons stated at the time but the short answer is probably that Germany was out-numbered.
But that was back in 1973. Have things changed, enough to swing the balance to deferred examination? I doubt it, but let Australia tell of its experience.
I find it interesting that Dennis uses the descriptor “low quality” to categorise all those DE and JP apps that go abandoned before the exam fee is paid. Is a US pro always “low quality”? Typically, how many priorities are declared in a JP non-pro filed at the end of the Paris year? Many more than just one, I surmise. And anyway, I had thought “quality” meant “fit for purpose”. I’m just not sure I know what Dennis means by “low quality”.
Good points, all.
Nonetheless, the whole thing seems somewhat spurious. Many countries (Australia, for instance) have a deferred examination system without an inventor compensation scheme. These would represent systems against which a valid comparison could be made. Surely one would need to look at these figures before seriously assessing whether or not Intel have a point.
Mr Morgan: Where to place one’s R+D? Yes, DE law is a factor. The Germans used to lament that their law deters foreign industry from putting their R+D into Germany. Germany has just reformed its Employee-Inventor Statute, but only to fine-tune out of it some impediments to smooth operation of its ongoing basic principle. Anyway, what do you mean by “payments” and “significant”? I had thought that sophisticated foreign companies find German Employee-Inventor law worth more to them than the modest pay-outs that they are required by law to cough up. All those highly trained, and motivated German engineers and scientists, looking forward to recognition from the company. The German auto makers do have in house patent departments, which do make pay-outs to employee inventors, which does raise the overhead these companies have to carry, it’s true. So, shall we compare the amount of innovation in the German and American auto industries, and the future prospects, in those two industries?
Max, in Germany and other countries you have also had the low cost alternative [cheaper and faster for both applicants and patent offices] of a Gebractmuster or other such “petty patent” applications, AS WELL AS optional deferred examinations of regular applications.
Also, if national employee inventor compensation systems [which typically require payments to inventors even if the company pays for getting the patent] were really a significant factor, should it not logically be a significant factor in decisions as to which countries multinational companies should put their R&D facilities in?
interesting article on Deferred Examination. Thanks for posting, Dennis.
Mr Morgan, I agree with your explanation for the high filing activity in Japan. But I also think Intel is on to something too. As I understand it, JP law on employee inventions is like Germany’s. There, an employee who makes an invention has to communicate it to the employer, who has to communicate back whether it will exercise its right to assume ownership. If it assumes ownership, it has to file, unless the invention is unpatentable or is instead to be designated a trade secret. So, if the invention is a design improvement to a product, what choice does the employer have, except to file? Until the Blue Diode case, domestic employee invention law was never something that came up, in discussion in non-domestic circles. But could it nevertheless be one explanation of the high numbers of filings in DE and JP, that has been evident now for some decades?
I did not realize I already have a TypePad account (not an unusual occurrence these days given the plethora of internet accounts I am bombarded with on a daily basis), so I am submitting this comment merely to see how it appears on this site now that I am logged in to my account.
I am quite pleased to see the mention of Mr. Lichtman’s new program at the IP Colloquium. His programs to date have been outstanding, and I fully expect this one will continue the tradition.
In 42 years of practice, including working cooperatively with a closely related Japanese company for many years, I have never even heard of this allegation that inventor compensation systems are the cause of much greater application filings there. The widely expressed, and realistic, reason they do so is because low cost application filings coupled with low cost 18 month publications thereof is vitally in their national interests. It provides valuable defensive protection for new export [and domestic] product features, partially from the application filing date, and fully from the publication date. [Both typically well before the product is publicly introduced]. Irrespective of whether or not any patent ever issues from the application. This defensive protection is effective against patents being obtained by anyone else filed later in any country to which the application-described product may be sold or used.
[Until the relatively recent “blue laser” patents Japanese inventor compensation system suit, that issue was never ever even raised or considered, in my experience.]
INTEL is right, to the extent that the judgement whether to file, and whether to go beyond A publication, varies from country to country. What would be really interesting is to observe the filing patterns of US companies with large R+D operations in, say, Germany. Do they adopt German ways in Germany and US filing patterns at the USPTO. Do such companies see a role for deferred examination?
AND, let’s be careful to define our terms, and to distinguish between jurisdictions like the EPO, where the search fee is payable on filing, and those where it’s payable up to 7 years after the filing date. For me, the EPO is NOT a deferred examination jurisdiction but for many readers, it is. What is it for INTEL?
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