More Rigorous Patent Examination In US Than Europe And Australia?

By Alexandra Nightingale for Intellectual Property Watch

A recently published study finds that, contrary to a conventional view, the United States Patent and Trademark Office undertakes more rigorous patent examination than the European Patent Office and the Australian Patent Office.

The study, published in the John Marshall Law School Review of Intellectual Property Law, provides “an answer to a question that, rather surprisingly, has not been addressed in the academic literature to date: What is the practical effect of patent examination?”

According to the study, this question is important because patent offices, particularly the USPTO, have been increasingly criticised for the poor quality of their patent examination. Consequently, “substandard patents unnecessarily stunt productive research and discourage innovation” notes the study.

In turn, an empirical analysis was carried out on the examination of nearly 500 patent applications, filed in identical form at the three patent offices.

It was found that “the role of the patent offices is not just that of a rubberstamp” and that “patent offices regularly narrow, over that which was sought in the application, the scope of the legal monopoly provided by the patents that they grant.”

Moreover, it was also found that examination does not occur at the same rate, but occurs significantly more often in the USPTO than in the EPO, and significantly more often in both of those offices than in the APO.

Alexandra Nightingale is a researcher at Intellectual Property Watch. She completed her Bachelors in Law at the University of Sussex and holds an LLM degree in International Law from the School of Oriental and African Studies in London. During her Masters, she developed a strong interest in Intellectual Property, particularly patents and the aspects relating to global health. Her research interests now also include geographical indications and trademarks.