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Is standardisation always a good thing in patents?

Keltie LLP

K2 IP Limited

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The EPO and USPTO have announced  triumphantly that they have completed the Herculean task of creating a consolidated patent classification scheme that provides up to 250,000 individual definitions for areas of science and technology. This project has been the result of several years’ work to harmonise the previously divergent technical classification systems used in the US and Europe to assist patent examiners in prior art searching and examination of patent applications. In essence, every patent application filed is assessed by an examiner and allocated one or often several classifications that cover the technologies used in the invention. Until now different classification strategies were used by the US and Europe often resulting in divergence in the outcomes of patent prior art searching. The intention of the project, called the cooperative patent classification scheme (CPC), according to EPO President Benoit Battistelli, is to “…align our patent procedures more closely and deliver major efficiency gains”. The Director of the USPTO, David Kappos, is perhaps a little more pragmatic about the benefits stating the new scheme is needed to “…eliminate duplication of work between the two Offices”. In fact it represents another step towards global harmonisation of the patent system which would allow applicants to avoid the current process of prosecuting patent applications according to divergent standards in different countries. Surely from a cost perspective this has to be a good thing, right?

Actually, IPCopy thinks that sometimes diversity can be a good thing. From our experience as attorneys and ex-examiners we find that divergence in the patent classification systems allows for a more thorough search of the prior art to be performed. As an example, many patent attorneys will say from experience that sometimes really important prior art documents turn up once the Japanese Patent Office search the application, often several years after the initial patent application was first filed and searched by, say, the EPO. The Japanese have a knack for finding relevant prior art that has been missed in earlier searches by the EPO or USPTO. Why is this? Probably because they use their own patent classification system that most likely favours non-English language prior art.

Most would agree that as a matter of public policy it is important that ‘good’ patents are granted. By ‘good’ we mean patents with a scope of protection that is justified and commensurate with inventive contribution to society. But if the diversity in the current system is lost it may result in a far narrower range of prior art identified in the course of a patent’s pre-grant life. IPCopy argues that if we  end up with a single International system for prior art searching it will inevitably be constrained by its own shortcomings. This could result in highly relevant prior art that would have been found by the USPTO, but not by the EPO, remaining undiscovered. Once granted, it is often costly and difficult to revoke a ‘bad’ patent. We say it would be better to celebrate the current diversity in technical classification as a failsafe for society in general rather than focus solely on the target of cost savings and harmonisation.

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