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A RADICAL VIEW ON THE FUTURE OF SUBSTANTIVE PATENT EXAMINATION

By Stephan Kinsella, Esq.

Interesting article in a Malaysian/Singaporean IP firm newsletter (it appears in the Q1/2006 issue of Henry Goh Intellectual Property Updates:

In recent years, there has been talk of a crisis in the patenting system worldwide. This reflects a concern over growth in the numbers of patent applications being filed and lengthening delays by patent offices in processing the applications through to grant.

Even the patent offices of countries that have traditionally been seen as relatively fast are slowing down under the sheer volume of work. A 2005 survey by the US-based Intellectual Property Owners Association showed that two-thirds of respondents expected the patent granting process in the United States to take longer over the next three years.

People unfamiliar with the world of patents are always surprised that it takes a period of years for a patent to be granted. The principal reason for this delay is the process of substantive examination under which the patentability of the invention is checked by a technicallyqualified examiner.

The reaction of the major patent offices of the world has been to recruit and train ever more examiners, increase sharing and recognition of each other's work, as well as to impose fees that penalize lengthy applications.

Malaysia has not escaped criticism for its delay in examining patent applications, either. It has been proposed that a further 500 patent examiners be recruited to add to the existing 42. However, the author submits that this will not solve the problem locally because of the way examination is currently done in Malaysia for most applications.

Instead, a more radical proposal is made. Do we need substantive examination as a pre-condition for grant of every patent? There are already countries such as France and South Africa whose patent systems do not provide for it. Instead, substantive examination could be made compulsory only prior to starting an infringement action or even sending a preliminary warning letter. A provision under which the Registrar of Patents and third parties could require an application to be examined may also be included.

The grant of an examined patent is never a guarantee of its validity. However, many patented inventions are not commercially exploited and even less are litigated. So, is it not logical that the expense and time of substantive examination be reserved for those that really matter?

Full post as published by KinsellaLaw Web Log on November 06, 2006 (boomark / email).