Only rarely has a patent attorney not contemplated the risk of his patent application being refused. Independent of the nationality of the competent Patent Office, there is a large spectrum of parameters to be considered and ad hoc complicated conditions that may affect the result of the applications. A patent attorney though always needs to advise his client (a person or a business) on the likelihood of success for his application. In case the applicant is a large company with a number of patents to granted due to the nature of the business (software, medicine, mechanics), then the above considerations are imperative.
Let's now turn to LexisNexis® Pathways. The basic idea behind Pathways is achieving a higher degree of certainty when drafting a patent application for the USPTO or in general when researching the potentials of a patent globally. The clarity we can find in Pathways for the USPTO process will serve as a welcome indicator for the strength of an application or as a service we can provide to our clients when questions about USPTO proceedings come along.
According to a survey conducted in 2015, EPO fillings increased for 1.5% and the top technological fields were those of medical technology, digital communication and computer technology. Origin of applications was detected to be mainly from European member states, United States and Japan. EPO granted approximately 68.400 patents in 2015, an increase of nearly 6% over 2014, and the highest ever number. Research also shows that the allowance rates vary depending on the field of technology.
Having said that, it is crucial to know the way EPO processes the patent applications in order to elaborate on how the Pathways tool can be of great help for the applicant/patent attorney. The Examining Divisions of EPO are responsible for the examination of patent applications. An Examining Division shall consist of three technically qualified examiners. According to the new guidelines published by EPO in 2015, the steps for the granting of a patent within the EPO may be summarized as follows:
- First, the application is filed with the EPO or a competent national authority;
- After that, the Receiving Section examines the application to determine if a date of filing can be accorded to the application;
- Then, the formal examination of the application is undertaken by the Receiving Section;
- In parallel with the formal examination the Search Division draws up an EESR (Extended European Search Report), a copy of which is forwarded to the applicant. This report indicates prior art.
- Then the application and the search report are published by the EPO either together or separately;
- on receipt of a request from the applicant, or, if the request has been filed before the search report has been transmitted to the applicant, on confirmation by the applicant that he desires to proceed further with the European patent application, the application is subjected to a substantive examination and an examination of formalities necessary for grant by the Examining Division;
- If all the requirements are met, the patent is granted, published and the opposition period commences.
Let's now turn to Pathways. The basic idea behind Pathways is achieving a higher degree of certainty when drafting a patent application for the USPTO or in general when researching the potentials of a patent globally. A patent attorney or an applicant usually spends months or even years researching and enquiring on the possibilities of an idea turning into a patent: is it worth it, how sure is he on the way it will be perceived and examined, and last but not least how much time and money will the whole process consume.
Even if EPO provides for certain tools and communication proceedings that bring examiners and applicants closer, so they can exchange ideas and facilitate the patent examinations, there are certain complaints concerning the lack of speed and efficiency regarding the patent examination procedure. These concerns are also accurate when it concerns the USPTO.
Pathways tool is an innovative tool – a software engine that leverages the power of big data- that predicts the path your application is expected to take at the United States Patent Office (UPSTO) and enables the patent attorney to estimate the cost and the length of the procedure, long before he initiates the drafting of the application for his client.
For the moment the tool can only be used for this particular Office, since it exploits data retrieved only from the UPSTO. Nevertheless, since it can guide the patent attorney and the applicants toward the best solutions for the correct characterization of the invention and the best path to granting, if applied properly, it can be an excellent tool for the European patent attorney and applicant.
The cornerstone behind Pathways is that "Art units are not created equal and the description of each invention can lead to different results." Even if UPSTO does not operate exactly like EPO, the latter has also Art Units which are the Examining Divisions.
Keeping that in mind, it is interesting to examine how Pathways can be potentially used by a European Patent Attorney more thoroughly:
- Pathways can direct the application to the group of examiners who best understand the technological field for which the patent is intended to launch. This means that if the outcome of the investigation is then applied to the EPO equivalent, the tool can inform the user on which Examining Section is more likely to receive the application.
- Using Pathways for examining the possibilities to get the patent in the U.S., the attorney can draft the application so it aligns with the examining section that represents the best fit for the patent unit. In this way the application will not only be immediately accepted for review by the USPTO with little need for further clarifications and amendments, but also it will be safer for the applicant to know that the drafting has minimum inconsistencies.
- The data included in Pathways help to setting expectations on the timing, cost and likelihood of success at the USPTO.
- Last but not least, Pathways can save patent attorney (basically his client-applicant) money. Say the client is a large multinational pharmaceutical company that has to apply for multiple patents in order to safeguard the business interests globally. Pathways can guide the applicant on which patents to apply for with the USPTO depending on the type and description of the patent and the allowance rates of the particular division. In that way the applicant will focus on the more successful patents rather than wasting time and money on applications with low expectations.
Needless to say: we await the arrival of this tool for the EPO data. But until that becomes available the clarity we can find in Pathways for the USPTO process will serve as a welcome indicator for the strength of an application or as a service we can provide to our clients when questions about USPTO proceedings come along.
Attorney at Law
LLM Commercial Law
Please contact us to learn more about LexisNexis Pathways™