When small is beautiful: Measuring the evolution and consequences of the voluminosity of patent applications at the EPO

Abstract

The joint increase in the number and size of patents filed around the world puts patent systems under pressure. This paper addresses issues in measuring the voluminosity of patent applications and highlights patterns in its evolution. The results, based on a database of 2 million EPO applications, show that the average size of applications has doubled over the past 20 years and that this is mainly associated with PCT applications having a US priority. Voluminosity indicators are influenced by geographical origins and technological areas and strongly impact the workload of the EPO, justifying the need for regulatory and policy actions.

Introduction

The past 20 years have witnessed a dramatic increase in both the number of inventions for which protection has been sought from patent offices around the world and in the average size of patent applications. This joint evolution of the number and size of patent applications raises serious concerns about the ability of the patent system to master the workload that it imposes on patent offices, in particular with respect to the efficiency and timeliness of search and examination procedures.

Although the phenomenon has become particularly pronounced in the last decade, the issue of patent complexity and voluminosity is far from being of recent concern.¹ For instance, in 1933 the US Patent and Trademark Office Society was seeking advice on recommendations to eliminate the multiplicity of claims and on a fee schedule dependent on the number of claims (Smith, 2003). Three decades later in 1965, the problem of complexity was reported to have had such a major influence on the delay in processing patent applications that it was proposed again. This was in addition to hiring more examiners and introducing mechanised searching and procedural modifications to increase filing and renewal fees (Duncan, 1965).

In recent years, the growth in patent voluminosity became so extreme that the term “mega-applications” was coined, often in relation to applications filed together with biological sequence listings. In one such case, the EPO received an application (EP20000301439) with 283 priorities, 80,259 sequences and an estimated 50,000 pages. Including all priority patents, the case totalled around 600,000 pages. In the US, the application US20050182468 was originally filed with 13,305 claims, for which a small-entity fee of 1,249,075 US$ was initially requested by the USPTO.² According to Dudas (2005), 7% of applications now filed with the USPTO represent about 25% of the patent claims that are examined.

Several recent reports prepared in the USA by the Federal Trade Commission (2003), the National Academy of Public Administration (USPTO, 2005), the United States Government Accountability Office (Mittal and Koontz, 2005), the Patent System Subcommittee of Japan, the Intellectual Property Policy Committee and the Industrial Structure Council (Patent System Subcommittee, 2002) have highlighted this voluminosity issue. In addition, further studies on the US patent system and the voluminosity of its applications include Lemley, 2000, Allison and Lemley, 2001, Moore, 2005.

At the EPO, the quality of the incoming workload has been publicly discussed as one of the factors influencing its current efforts in mastering the workload³ and is now an element of the ongoing strategy debate on the future of the patent system in Europe.⁴

The objective of this paper is to address several issues regarding the voluminosity of patent applications at the EPO: How can the voluminosity be measured? Are there some patterns in the potential factors underlying its surge? Are there any identifiable social costs induced by this phenomenon?

In addition to this objective, the originality of this analysis relies on a database that has been built specifically to measure and address these phenomena in the context of the EPO. It is created from a large number of variables providing information on more than two million documents filed at the EPO between the creation of the Office in 1978 and the end of 2004.

The paper is organised as follows: Section 2 discusses the measurement issues and scrutinizes the candidates for voluminosity indicators, Section 3 investigates potential explanatory factors, Section 4 elaborates on the social cost of patent voluminosity and Section 5 concludes.

The main results are in conclusion that the voluminosity of patent applications at the EPO can be measured with the number of claims and pages of applications, that these indicators have doubled over the past 20 years, and that this phenomenon is mainly associated with applications that have been filed via the PCT route, with a US priority filing, in the biotech sector, or with a large number of inventors. Moreover, this evolution has a tangible impact on the Office’s workload. All these findings will provide a useful basis for further analytical work in the field.