The following is from a commentary made on 14. Dec. 2006 by Hal Wegner of Foley and Lardner LLP:
"The 29% Japanese patent allowance rate was noted earlier this month as
demonstrating a high level quality filter to weed out bad patents. An
anonymous critic posted by Greg Aharonian has
raised two valid questions: First, what basis is there to correlate the low
allowance rate to higher quality? In other words, do the Japanese examiners
actually weed out patents that U.S.
examiners routinely pass out and allow? Second, doesn’t the Japanese deferred
examination play a major role in the low allowance rate?
Good points!
(1) Empirical Basis to conclude that Japanese Examiners do weed out
Patents Routinely Granted by American Examiners: The critic states that
“[s]etting aside the issue of post-grant review
(which I agree needs some improvement), I must take issue with using
allowance rates of any patent office as the justification. It's just
[scatological reference deleted]. Or does Hal Wegner
have some evidence that ‘low’ is equal to ‘good’?”
An empirical study of more than 70,000 parallel filings in the United
States, Japan and Europe provides chilling testimony. Paul H. Jensen, Alfons
Palangkaraya & Elizabeth Webster,
Disharmony in International Patent Office Decisions, 15 Fed. Circuit
B.J. 679, 689 (2006), conclude that “there is a low proportion of grants and a
high proportion of reject[ion]s by the JPO
of patents that have been granted by the USPTO. … 44.5 % of patents
granted by the USPTO were granted by the JPO, while 14.6 % of patents granted by
the USPTO were rejected by the
JPO.” Applicants recognizing the greater scrutiny patents receive at
the JPO and EPO simply give up the hopeless cases that are prosecuted to issue
in the United States: A “striking feature”
of the study “is the high proportion of patents granted by the USPTO
that were … withdrawn at either [the JPO or EPO]. Specifically, of those patent
applications granted by the USPTO,
29.6 % were withdrawn at the JPO while 18.5 % were withdrawn at the
EPO.” Id. at 691.
(2) Deferred Examination Does Play a Role: The critic herself makes the
point from her own experience: “The critic states that her “own personal
experience with the JPO is that my clients'
allowance rate is nearly 100%. Of course, of the many PCT applications
that I file for my clients with an intent to obtain protection in Japan, only a
minute fraction are ever even examined.
Most are abandoned due to changing market and business decisions. By
the time examination occurs in Japan, all of the arguments have already been
made during examination in other
countries, and all of the art is known. Admittedly, it's a ‘last claims
still standing’ model, but again, the success rate is nearly 100%.”
Indeed! With deferred examination roughly half of all patent applications
are eliminated by the applicant himself as he “piggybacks” off the results of
foreign counterpart examinations and the
evolution of the commercial realities that eliminate many patents. Of those
that remain, many are tailored with more specific and less ambiguous claims,
thanks to the “lessons” learned in the
foreign counterpart examinations."
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