Changes of Patent Culture

When one has a chance to speak to a Patent Attorney now standing in or approaching the age of retirement, then there is a good chance that he or she might tell of the habits of drafting and filing patent applications twenty or thirty years ago. In those times it was common understanding by all or almost al professionals in that branch of business that the resulting length and/or complexity of the patent application was substantially irrelevant. The efforts of the attorney were billed by the hour, and there were no (or at least no harsh) surcharges for very long and/or complex applications.

The decisive factor was the disclosure interview with the inventor or a written disclosure provided by the inventor. A good patent attorney not only grasped the innovative core of an invention when drafting the independent claims but also took great care that as many fall-back options as possible were provided in the disclosure. In particular, the patent attorney was eager to stimulate the inventor to think of possible alternative embodiments of the invention. Could the housing of the inventive device not only be made of plastics, as in the preferred embodiment in the original disclosure, but also of, say, aluminium pressure die casting? Could the arrangement of contacts in the inventive electrical connector also be re-arranged somehow in a different way without departing from the gist of the invention?

All this disclosed subject matter was put up meticulously in order to be well-prepared to defend the inventive step vis-a-vis the examiner. Anecdotal evidence says that in those days at least before the German Patent Office fierce disputes with the examiner concerning the inventive step were common practice, not an exception as it might be seen today. Moreover, these lenghths taken at the disclosure interview also allowed better defence in Opposition proceedings as well in Court (Nullity proceedings) and facilitated effective generalisations of the claims, later preventing any easy circumvention of the patent.

If the inventor was tight-lipped or if the patent attorney had to work solely on the basis of a brief written invention disclosure, the result was a quite brief patent application, maybe ten printed pages of the published Official document or so. However, if the inventor was more talkative or even garrulous, the communicative interaction between him or her, on the one hand, and the Patent Attorney, on the other hand, could result in a patent application of a hundred pages or even more, concenating the description of one alternative embodiment after the other, together with corresponding drawings and claims. On top of all that in many occasions more than hundred claims could be found.

This was, and partly still is, the world of bespoken patent applications.

Will this way of doing patent business survive? I am in doubt. I would not be overly surprised if, in ten years or so from now, there would be a mainstream of commoditised patent applications with about 15 claims and comprising approximately thirty to fourty pages in total, drafted and written down with a modest investment in time and energy by a Patent Attorney or a cheaper substitute thereof.

This might happen not only due to the penalty imposed by Office fee structures but also by the demise of the billable hour. More and more companies, mostly from big industry, are currently approaching their external Patent Attorneys for quotes covering flat rates for drafting and filing patent applications, sometimes also including routine prosecution work after filing. If the Patent Attorney is paid on the basis of a flat fee, there is no incentive for extracting ever more and more alternative embodiments from the inventor's brains. This does not necessarily mean that in such a case the Patent Attorney should feel encouraged to allow sloppyness in conducting the disclosure interview, but under such boundary conditions, the time for long and complex patent applications will probably be over.

Hopefully the in-house counsel and the top management of the applicant company will then also recognise that if such a commoditised patent goes to court then there should be no genuine surprise when it becomes clear that there are less fall-back options disclosed therein than in those larger and more expensive bespoken patent applications of old times.

It is also conceivable that the market might split into a mainstream of commoditised patent applications and a niche of bespoken applications, e.g. for start-ups which are intended to be based on a single crucial invention (the so called "crown-jewels").

Maybe also that during the coming decade, in order to fight the backlog, Patent Offices will get more tight rules discouraging Applicants setting up and utilising systems of cascaded fallback lines as it is common practice today. For example, I would also not be surprised if the general rule already provided with the EPC saying that Applicant is guaranteed only one amendment of the claims would, in later years, be rigorously enforced in order to reduce complexity of the patent Examination process and speed up the same. Under such a system, Applicant might have, after being served with the Search Report, one and only one shot to amend and bring through a certain statement of claims. No late filing of Divisionals, no auxiliary requests.

Under such hypothetical but very rough external conditions the only remaining option for protecting "crown jewels" might be to prepare and file a multitude of commoditised patent applications, every one thereof ephasizing a different aspect.