Why are patents so difficult and expensive?

“The UK Intellectual Property Office [UK IPO] should draw up plans to improve accessibility of the IP system to smaller companies who will benefit from it.  This should involve access to lower cost providers of integrated IP legal and commercial advice.” (Hargreaves Review 2011, recommendation number 9)

At the time of writing, we are still awaiting the UK Government’s response to the recommendations made in Professor Hargreaves’ report: Digital Opportunity – A review of intellectual property and growth.  In the meantime, the UK IPO continues to provide assistance to individuals who choose to file patent applications themselves, without taking advice from a professional patent agent.  This is consistent with the IPO’s Five Year Corporate Strategy, which includes the following statement:

“We will …further improve access to the IP system. This will include assessing whether we can do more to help unrepresented businesses and individuals make the right choices when applying for IP rights.”

Some (or perhaps most) UK patent attorneys view the IPO’s advice to self-filers with deep misgiving.  The LinkedIn Chartered Institute of Patent Attorneys discussion group (you need to be a member of the group to read its discussions) has recently been discussing this guidance from the IPO on using academic papers as the basis for a patent application.  Several patent attorneys thought this advice was unhelpful, if not downright negligent.  Some queried whether the IPO should be giving any advice to self-filers, other than to engage a patent attorney.  There was a view that “dumbing-down” advice to the level of a consumer simply wasn’t possible in the area of patents, and that the IPO should not be attempting to make it easy for self-filers.

More generally, one patent attorney, Tom Hutchison, commented:

“Here’s the crux: it takes a trainee patent attorney, who is immersed 35+ hours per week in the ‘patent process’, on average, 4 years to pass the UK and European drafting exams. The failure and attrition rate is high and that’s because the exam is hard, and that’s because drafting is just plain difficult.”

This comment prompts IP Draughts to ask some dumb questions. Why is it so difficult?  Could it be made any easier?  And will Government accept the view that it is impossible to make it simpler, cheaper and more user-friendly for inventive consumers?

On the last of these questions, the Hargreaves recommendation quoted above suggests a different direction of travel.  Governments are inherently suspicious of professionals arguing for the status quo, as solicitors know only too well.  Might the examples of licensed conveyancers and professional will-writers, relatively new breeds of quasi-professionals who compete with solicitors, provide Government with a template that they feel could be extended to patent writing?  Could we see the emergence of a new, paralegal-level adviser on patents who will provide a cheap, consumer-focussed service?  Or will the IPO expand its help-desk services to the point where self-filers can find all the advice they want under one roof in Newport?

UK Governments have extensively reformed the market for legal services in recent years.  In some areas, patent agents have benefitted from the reforms, eg through rights of audience in the courts.  The most intrusive development for patent agents has probably been the formation of IPReg and all that goes with it.  It remains to be seen whether Government will introduce major reforms to the market for patent services in response to the Hargreaves recommendations.

2 Comments

Filed under Intellectual Property, Legal policy

2 responses to “Why are patents so difficult and expensive?

  1. Oh I feel my blood boil even at the thought of a patent office in the 21st century. The patent office offers NO help in defending a claim; they only keep ‘the record’. Why on earth would they have the right to tell someone how an application is worded. If it went to court a ‘t’ not crossed would have no bearing on the case. The fact is very few small claimants ever get their day in court anyway to argue the ‘t’s as they don’t have the money to defend their claims (and the IPO won’t foot the bill). Chinese companies push their (copy cat) products past the border every day and you’re done!
    And why do we have to keep paying fees once an application is complete? What does the IPO need to do? It’s grabbing money from the hands that could help feed nations if ‘homeland’ inventors were allowed to protect their ideas for the good of all. The police services are paid for from tax and so should patent protection as it is defending citizens from theft. A rational assessment of a simplified application would allow an ‘inspector’ to tell if the invention was viable; a stage 2 search would easily discover any prior claims if done digitally and a final approval would put money in the tax payers pot for the good of all by providing national income. My suggestion is to put these pen push IPO bureaucrats to work on protecting our creative edge and make them accountable to the inventors and the country as a whole. After all the creative edge may be the best trump card in an increasingly more competitive world.

  2. Oh, where to start.

    I once spent 3 hours going through a specification to remove all references to “inches” and replace them with an acceptable SI equivalent, at the insistence of the EPO. The text originated from the US, where inches are in common use. The skilled reader would have understood the original perfectly. My work therefore added nothing to the patent or to the sum of human knowledge, but cost the client a pretty sum. All that I achieved was to keep the EPO quiet.

    The UKIPO is no better. It once asked me to amend the reference to “These are spaced at 18mm, as under the former imperial system it was common to space them at 3/4″ intervals” so as to remove the reference to inches. Yes, you read that right, they wanted me to say “These are spaced at 18mm, as under the former imperial system it was common to space them at 18mm intervals”. I spent some of my time and the client’s money arguing against that (successfully, I am relieved to say).

    Nor is the USPTO better. A patent claim to a marine navigation system ended with the words “thereby to determine the location of the vessel”. The objection? “The location” lacked antecedent basis. We considered amending the claim to “A Universe, comprising at least one solar system having at least one planet, there being an expanse of liquid over at least part of the surface of the planet, on which liquid floats a vessel at a location on the planet,…”. To my regret, we argued instead that a location was intrinsic to the concept of “a vessel” and therefore “the location of the vessel” had antecedent basis in “a vessel”. Just think of the damages if we were awarded a royalty based on, say, 5% of the value of the infringing item… a universe…

    These are the silly examples, of course, but there are more serious ones. A particular area is in extension of disclosure. Arguments over that are real and necessary; let someone infringe those and you let them claim a priority date for something they might not have invented at that date, potentially leapfrogging a later applicant who is the real inventor. Enforce them too strictly and you put form before content, making the fate of the application dependent on the precise wording chosen many years previously rather than the quality of the invention.

    In short, yes it is expensive. Yes, we patent attorneys spend hours finessing the text into submission and arguing over pointless issues. But that is because we have to. We are told to by the Courts, who decide what rules patent applications must meet, and Patent Offices who enforce those rules with varying degrees of rigour.

    Yes, we could have a cheaper system, a much cheaper system. But it would have to be much more informal, much more flexible. In other words, a system that would be much easier to game. Someone would lose out. Someone would end up being treated unjustly.

    So as and when society decides that is a price worth paying, that the benefits of a cheaper system are worth the cost in unfairness, let us know and we’ll stop being such bloody pedants. But in the meantime, please don’t shoot the messenger!

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