Comments on: Peer-to-Patent Community Patent Review

By: MaxDrei

MaxDrei — Sat, 05 Jul 2008 07:51:46 +0000

Dear Mr Calvo, why not make P2P (Art 115) observations before grant AND then file an opposition after grant, as well? In the end, who cares what the Examiners think. The only thing that matters is what the TBA thinks, and a TBA doesn’t notice whether the Art 115 art was filed before or after the B publication. The main thing to watch is what activities win disposal points for EPO Examiners. They get points for a Notice of Allowance but none for a 2nd examination report. So, which one of those two communications would you rather issue, if you were an EPO Examiner? That might be the real reason why Exrs don’t really want to look too hard at Art 115 observations.

By: Rodrigo Calvo

Rodrigo Calvo — Sun, 29 Jun 2008 11:44:27 +0000

And ipeg, as to your question to MaxDrei, the main reason why a European Patent Attorney will rarely advise his client to file 3rd party observations is because, as you point out, an EPO examiner is absolutely not bound to pay any attention to them. It’s usually far better to wait until the patent is granted, and file an Opposition, where you’ll have the same right to be heard as the patent proprietor.

By: Rodrigo Calvo

Rodrigo Calvo — Sun, 29 Jun 2008 11:38:30 +0000

The main problem I see in this approach is that, while “the outside community” may indeed be better informed than an individual examiner about where to search, I doubt they’ll be many who’ll actually understand what to search! I often get disheartenend when I see public discourse about controversial patents, that even so-called “specialists” base their judgment on the abstract, or even just on the title, and very few people understand that the coverage of the patents is primarily defined by the claims, with even fewer people being able to understand what those claims actually mean. So the danger is that, far from helping the Examiner obtain the most relevant prior art, such programs, if “successful”, will actually flood the Examiner with plenty of absolutely irrelevant prior art. It also completely undervalues the know-how of an experienced examiner compared with “the wisdom of masses”: if you’d need surgery, who’d you like to perform it, an experienced, well-trained professional, or a committee of week-end amateur surgeons? What Patent Offices need is experienced, well-motivated examiners with adequate search tools, not cheap gimmicks.

By: MaxDrei

MaxDrei — Thu, 12 Jun 2008 05:58:39 +0000

Dear IPEG, thanks for the reaction. Europe has had Peer to Patent, Art 115 EPC, since 1978. It works, up to a point. But think, who’s going to be bothered to prepare observations on patentability that are concise enough and cogent enough that EPO Examiners counting their points are going to be faffed to read them and apply them? I would submit an answer to you – nobody but a keen and alert competitor of the Applicant. And what interest does that competitor have, in seeing the Applicant, his competitor, receive from the EPO a patent of “higher quality”. Actually, I want my competitor to possess nothing but low quality patents. So, I’m not going to spend lots of money helping him get higher quality ones. Or am I?

By: ipeg

ipeg — Tue, 10 Jun 2008 12:40:28 +0000

The idea from the New York University is a good one. I agree that the “filing observations”-tool may not always be the best way, especially not as the EPO is not bound by or nor does it need to justify if and how the EPO uses the observations (if I am correct). However the idea to provide the community at large a possibility to provide prior art info by experts (in a controlled way obviously) a fruitful contribution to improve the patent quality. Dear MaxDrei, we are not sure we understand your question. We never advise clients in patent prosecution matters but would love to hear input why a European Peer-to-Patent would not work. BE interesting discussion. I seem to remember this same idea was proposed in the software directive discussions some time ago.

By: MaxDrei

MaxDrei — Mon, 09 Jun 2008 06:14:13 +0000

Hoping isn’t enough, is it? First you have to displace the perception amongst patent attorneys that making observations prior to grant, under Art 115 EPC, is a dumb thing to do. Now me, I think it’s sometimes a smart thing to do. But more often NOT a smart thing to do. Horses for courses, no? May I ask you IPEG, have you ever been in the position of helping a client to decide, whether or not to file observations on patentability? Was it a serious question? Were there arguments both ways?

By: Database Management » Blog Archive » Peer-to-Patent Community Patent Review

Sun, 08 Jun 2008 11:02:35 +0000

[...] Belloves wrote an interesting post today onHere’s a quick excerptPeer-to-Patent Community Patent Review June 8th, 2008 Posted in EPO, Patent Policy | No Comments » One would assume that easier access to information worldwide that internet provides would make it easier for Patent Offices to find prior art against a patent application so as to ensure that only real inventions are passing the patent process and make it to an issued patent. No expert can possibly have the scope, skills and capabilities and knowledge of prior art that deep, individual technical [...]