The End of Patent Agents

Download the Original Research Paper 

A recent post In Defence of Patent Agents by Barrister, Jane Lambert which suggests that patent agents are content to follow instructions and get invalid patents for inventions brought to them, led me to ponder where the profession might be going. Jane's concern is the lack of business acumen within the profession. This is a fair criticism, patent firms recruit from Oxbridge PhD standard candidates who are literate but want a more comfortable life than the research lab can offer.  Entrepreneurial flair or experience are not generally expected. Indeed, while hanging out with students interested in entrepreneurship, I have met very few interested in patent agency as a profession; whilst those that are interested in the profession have been unresponsive to my suggestion that they join iTeams or their University business club or competition.

Then I started to read a Research Paper published in October 2010 and prepared for the IPO to help inform the UK IP policy and funding for the third mission of British Universities. Academic research, it seems to me, has to be intractable to ordinary mortals.  After reading the articles mentioned in the four pages of bibliographic references, it is perhaps not surprising that the view from the CEO's desk has receded far from view.  The paper informs me that patent activity by Universities was introduced and encouraged to promote knowledge transfer. Now, as a useless patent agent, I have assumed it was so Universities could secure some financial reward for their innovation. In case you doubt me there are even  references in the correct academic format to Romer, 1990.

The interesting bits I found were that the direct costs of IPR usually exceed revenues and many University Technology Transfer Offices struggle to be profitable.  In short there is a lot of ammunition in this paper that would encourage removal of funding from the TTOs which are supporting quite a few patent agents. Because of the need to read all that bibliographic material, the researchers only had time to talk to three universities, of which only one (unnamed) could have made much value from patents as the others were a social sciences college and a former polytechnic.  Hopefully there will be some of those IP Strategists that Jane promotes to advise the IPO on how it should take such inputs and pass them on to Government.

From my personal observations, I tend to agree that IP does inhibit knowledge transfer, but not because of its existence, but because of the endless bickering over ownership, filing strategy and licensing terms which can mean industry gives up using certain University departments that could be very helpful to them.  Such anecdotes sadly don't count in the world where Political decisions are driven by Academic Evidence.

IP, especially the hard stuff, is vital if there is going to be economic benefits of UK science fed back into the UK Treasury. So often, however, Universities are wasting money on patents before any  use of the technology has been identified or in areas where the market is far too small.  It seems to me that patent agents are in a good position to contribute to the debate.  However when submissions are made by the big firms or professional bodies they are all too easily dismissed as being driven by commercial self-interest. Here,maybe, SOLOs may have an advantage.

Don't be made a Fool of by the European Patent Office Rule Revisions

1st April is the day that the EPO introduces its rule changes to "raise the bar". The EPO website highlights the changes here. Loads of publicity has been given to the changes to Rule 36, which prevents you filing voluntary divisionals more than 2 years after the first communication on examination.

My guess is that Patent Agents will be filling the EPO coffers with fees for Further Processing because of the new Rule 70(a) and Rule 161. These require a response to the search opinion. Its not too bad if you are processing a normal European patent application filed directly with the EPO. You must respond to the  search report when requesting examination. If you do not then you can expect a communication that the application is deemed withdrawn and further processing fees will apply as well as the filing of the response.

Life is a bit more complicated when it is a PCT-EP application. If you are going to get a supplementary search then you are OK to wait the usual long period where nothing is required of the applicant however meritless the apllication. However if the EPO did the search, then your Rule 161(1) notice stops being a letter you can ignore, but one that needs a response within a short period. Entering the national phase of a PCT application is already wildly expensive and a heavy financial risk to solo attorneys. Now it means a big risk on your own time working on the response as well. My low esimate proved too much for a lay client the other day and it transpires he is doing the work unaided.

A little client management is now going to be needed to explain this early obligation. The EPO hope that agents will be helping them reduce the backlog of doomed applications before they arrive. Its not going to be that easy especially if it raises the number of unrepresented applicants. I advised a different corporate client last week that it was not worth entering the national phase as they could not tell me why they thought the search opinion had missed the point of the invention. All that happens is that another attorney will do it and I earned no fees for my sound advice. Being solo I have no-one to whom to justify that loss of business but in larger firms such good advice may be less welcome.

If you are in Glasgow you can attend the CIPA Seminar on 16 April to make sure you are up to speed with all of the new rules.