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UK and US patent examiners in co-operation scheme often disagree on patent applications says IPO report


Examiners assessing whether or not to grant patents in the UK often fail to agree with the findings of US examiners who are participating in a transatlantic cooperation scheme, a new report has said.

The UK's Intellectual Property Office (IPO) and US Patent and Trademark Office (USPTO) have been operating a work sharing initiative since November 2010. The scheme was established so that each office could take advantage of one another's resources in a bid to speed up and improve the quality of patent search and examination procedures.

Preliminary results from a survey of more than 500 US and UK examiners, which asked about the operation of the scheme, suggest that the assessors often disagree with their counterparts' findings on whether applications display sufficient novelty and inventiveness.

To qualify for patent protection inventions must primarily be new, take an inventive step that is not obvious and be useful to industry. Examiners search through 'prior art' to check whether applications for patent protection are novel and examine whether they satisfy the inventive step requirements amongst other assessments of patentability.

Although UK examiners assessed "exactly or substantially the same" patent applications as had been analysed by US counterparts on 82% of occasions, on 45% of occasions they failed to come to "at least some of the same conclusions" as those US assessors on whether the applicants seeking patent protection had taken an inventive step that was not obvious. UK examiners also failed to agree with "at least some of the same conclusions" made by US examiners on whether inventions were new on 34% of occasions.

The Offices are "looking into possible underlying reasons" for the differences, according to the report (8-page / 287KB PDF).

"Although the laws on novelty and non-obviousness/inventive step in the US and the UK on their face have many similarities, it appears there are divergences at least at the practice level, for instance, the methodology by which examiners in each office perform a non-obviousness/inventive step analysis," the report said. "Another explanation could be differences in approaches for formulating a search strategy."

"Accordingly, it is expected that further work at the practice level, alongside more interaction between the Offices, may facilitate a better understanding of the outcomes in each Office and advance work sharing efforts," it said.

The report added that UK examiners had found search work on 'prior art' by US assessors "at least useful" 59% of the time and that work on "substantive examination" to be "at least useful" in 65% of cases.

Despite the different conclusions often reached the IPO said the work sharing initiative had helped speed up procedures within the two offices.

"Through closer collaboration, both parties have improved the efficiency and quality of the patent examination process," it said in a statement. "This was achieved by enabling patent examiners from each office to make greater use of each other’s work on commonly-filed patent applications."

David Kappos, Under Secretary of Commerce for IP and USPTO director said: "By making more efficient and effective use of each other’s work, we can reduce the cost of doing business and help innovators move their products to market faster, with more predictability and certainty."

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