The message is clear. Patent backlog is one of the biggest issues affecting the IP industry today. Offices around the world are under pressure to find more effective and efficient methods to process patent applications. We outline their solutions

The big three – the European Patent Office (EPO), the United States Patent and Trademark Office (USPTO) and the Japan Patent Office (JPO) – known collectively as the Trilateral Offices – are attempting to manage record numbers of applications. As early as 2004 it was reported that the US Patent and Trademark Office (USPTO) was ‘drowning in paper’ and facing a five-year backlog. In Japan the JPO – which has had to counter criticism that it is notoriously slow in processing applications – saw its backlog increase from 522,000 in 2003 to 755,000 in 2005.

EPO president Alison Brimelow admitted last month: ‘I am troubled by the global level of backlogs because we are struggling to keep up with the number of applications. This is leading to long periods of uncertainty, which are not good for business.’

All bad news? Well not quite. Plenty of exciting and innovative plans are being considered on how to solve the backlog issue. Here, two leading industry figures from the USPTO and the UK-IPO share their opinions and offer some sound solutions on how to alleviate the problem.


MARGARET PETERLIN, deputy under-secretary and deputy director of the USPTO, underlines the organisation’s philosophy on the debate. She explains that the USPTO has long advocated that office-to-office ‘work-sharing’ is an essential component of any strategy to reduce application backlogs.

Can the patent backlog be solved?
The way the international patent system works, applicants must file duplicate
applications in each national patent office where they want to obtain protection, and each office must then perform a duplicate search and examination. This is inefficient. Consider, for example, the case of the USPTO. A little less than half of our yearly application filings are from non-US residents. Of the remainder that are filed by US residents, about half will subsequently be filed in another national patent office, meaning that roughly 70% of applications filed at the USPTO will undergo a duplicate search and examination either by the USPTO or by another office.

This is why work-sharing is so critical to reducing backlogs. Work-sharing allows an office to make use of work previously done by another office on the same application, to speed up its own examination. This produces a two-fold benefit, allowing the office to move more quickly through its backlog and improve quality. Obviously, the more offices that work-share, the more efficiencies that are realised. While we favour a comprehensive solution to work-sharing,  bi-lateral arrangements like the Patent Prosecution Highway (PPH) are useful in the near term for demonstrating the proof of concept and providing a suitable foundation for further work-sharing efforts.

What steps would you like to see implemented to alleviate the problem?
We think that reducing backlogs will require a combined effort in terms of changes to practice and internal processing at the USPTO, and greater office-to-office co-operation. Regarding practice and processing changes, the USPTO recently issued Final Rules dealing with claims and continuing applications in an effort to help us dedicate resources more appropriately to examining applications in a timely, efficient and high-quality manner.

We are also working with Congress to try to get something called Applicant Quality Submissions (AQS) included as part of pending patent modernisation legislation. AQS would require higher quality applications, which will help examiners focus on the most relevant information, and in turn lead to improvements in both quality and efficiency. We are currently running PPH pilot projects with the JPO and the UK-IPO, and we plan to work with two more offices in early 2008. In addition, we have had discussions over the last year with other national offices; the USPTO has proposed what we believe is a more comprehensive work-sharing solution called ‘SHARE’ (Strategic Handling of Applications for Rapid Examination).

Under the SHARE concept, each office would give examination priority to applications for which it is the office of first filing. By prioritising the processing of these applications, the first office will be more likely to produce search and examination results before the second office has begun its own search and examination on the corresponding application.

We think that SHARE holds great promise for work-sharing and for helping us reduce our backlog, and we are encouraged by the support we have received from other offices.

Are there any immediate changes that patent offices could make?
Offices can take immediate measures to implement work-processing efficiency gains, which will in turn facilitate work-sharing. By making more search and examination results available earlier, offices can take advantage of that work and begin reducing their backlogs. Here at the USPTO, we are doing comprehensive process-mapping to identify areas of potential inefficiency.

Is the USPTO’s accelerated examination concept a step in the right direction?
Our accelerated examination programme has shown incredible results with respect to the impact of getting better information from applicants at the beginning of the examination process. To participate in this programme, applicants must provide focused and detailed information about their inventions, an explanation as to why their inventions are patentable over the prior art, and the most relevant prior art upon filing their application. An interview between the applicant and the patent examiner is also required. In return, the USPTO issues a final decision by the examiner within 12 months as to whether the patent will be granted or denied. We recently had a patent issued only 75 days after the application was filed. The increased disclosure upfront by applicants helps examiners make a quicker decision about whether a claimed invention deserves a patent.

'PPH arrangements are an indicator of a serious willingness of patent offices to address the problem. But we need to think about why there is the duplication in patent filings, as well as where they end up.'
- Ian Fletcher

The interview aspect of the accelerated exam programme has proven to be so successful that we are looking at a pilot programme in which the examiner prepares and mails a preliminary office action to the applicant, and then an interview with the applicant is scheduled within 30 days to discuss any rejections and proposed amendments. We think this could lead to efficiency gains, as issues are resolved sooner than in the standard examination process.

Can a worldwide model for patent examination ever be achieved?
The international patent system is and has been fractured for many years due to the absence of a harmonised body of substantive international patent law. This fracture leads to the inefficiencies I mentioned earlier, not only in terms of offices duplicating work, but applicants having to file and prosecute the same application multiple times in different offices to obtain the protection they seek.

We believe that harmonization will improve work-sharing because offices will be conducting search and examination according to the same basic standards.

Is keeping the ‘quantity’ of backlogs under control a losing battle?
We don’t see the issue as either/or. If you look at the USPTO’s strategic plan
for the next five years, our number one goal is to optimise patent quality and
timelines. We are continuously looking for ways we can improve the patent
process – in both the quality and the efficiency of the examination.

Over the last several years, the USPTO has instituted a number of quality initiatives, which we also believe will yield efficiency gains. In addition to claims and continuations rules and accelerated examination, which I mentioned earlier, we have started a peer-to-patent pilot in which members of the public can submit technical references relevant to the claims of a published patent application before an examiner reviews it.

We have instituted a new university-style training programme for our new examiners and more quality reviews during the examination process. We are pleased that our focus on quality is paying off. In 2007, we saw a record high in-process compliance rate of 92%. We believe our quality controls also contributed to the lowest allowance rate in USPTO’s history, with 51% of patent applications being granted in 2007, down from a record high of 72% in 2000.


IAN FLETCHER, chief executive of the UK-IPO agrees that patent backlogs are a global problem. He stresses that there must be scope to improve the efficiency of the global patent system by allowing one patent office to access and place some reliance on work previously carried out by another patent office on an equivalent application.

Can the patent backlog be solved?
The concept of work-sharing was first developed by the Japan Patent Office, which concluded agreements with the USPTO and the Korean Intellectual Property Office. The UK Intellectual Property Office (UKIPO) now also has two Patent Prosecution Highway (PPH) agreements in place, one with the Japan Patent Office and the other with the USPTO. The UK agreements were the result of the immediate implementation of recommendations in the Gowers Review of December 2006, about pursuing work-sharing arrangements to reduce cross-national duplication of effort in global patenting. Because the root of the problem is global duplication, though, it is unlikely that PPH agreements by themselves can solve it, although they are certainly a good
place to start.

What steps would you like to see implemented to alleviate the problem?
The principal problem is the duplication, which arises from parallel filings in many countries for a single invention. The PPH is one mechanism for doing this. We are also working with partners in the European Patent Organisation on the Utilisation Pilot Project to identify the benefits of exchanging search reports produced on priority applications later submitted at the EPO.

There is no magic bullet that patent offices alone can administer. PPH arrangements are an indicator of a serious willingness of patent offices to address the problem. But we need to think about why there is the duplication in patent filings, as well as where they end up.

The international treaty framework, at the moment, requires parallel applications in order to secure international protection. It is certainly possible to conceive of an improved legal framework, which could institutionally reduce the current massive duplication. Unfortunately, experience of efforts to secure patent law harmonisation is not encouraging of early success.

We also need to recognise that many applicants value the more comprehensive view of the prior art, which multiple searches can provide. I can understand that, and until a single patent office search is as complete as a basket of searches, it will be difficult to persuade applicants otherwise.

Is the USPTO’s accelerated examination concept a step in the right direction?
I cannot comment on the USPTO practice, but I can say that the UK-IPO has for many years offered applicants the opportunity to accelerate various parts of the patenting process. All our searches are delivered quickly (we complete 90% within four months of the request). Not every applicant wants very rapid examination and grant, but for those who do, we aim to deliver. In 2006-2007, roughly a third of applications going through to examination were either combined search and examination cases or accelerated examinations, and we have found the combined search and early examination of applications to be beneficial in terms of efficiency of processing. The Gowers Review recommended we take forward a start-to-finish fast-track process, and we are consulting on that now.

Is keeping the ‘quantity’ of backlogs under control a losing battle?
The UK-IPO is, like a number of others, ISO 9001 certified, but we are not complacent, and we are constantly seeking to improve the quality of our processes and products. The work that the EPO and contracting states of the EPC have been doing to establish a European Quality System is extremely valuable. We hope it will be possible for similar discussions to take place more widely. After all, work-sharing arrangements, such as the PPH, are only effective if the original work is of the highest quality so others can rely on it.


CPA’s CHRISTIAN BUNKE concludes: The patent system exists to deliver economic benefit by providing rights to enable innovators, and society more widely, to benefit from their ideas. An emphasis on quality over quantity in the granting of applications can go a long way to allow the patent system to function as initially intended. That said, the backlogs at several of the leading patent offices are causing a strain on the patent system, the patent applicants and industry in general, as patents are not rejected or granted in reasonable turnaround times. The recent Memorandum of Understanding between the Trilateral Patent Offices and other efforts to coordinate work-sharing is a starting point, but to solve the root cause of the problem a multi-lateral agreement on job sharing between patent offices or possibly even with commercial service providers appears to be needed.

Have your say:
If you have an opinion about the backlog crisis being faced by our international patent offices, and what they should be doing to resolve the problem, email the editor at ipreview@cpaglobal.com


This article first appeared in IP Review, issue 20

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