Creating a model patent office for a developing country is not a simple task, as each country has different needs at different stages, said James Pooley, deputy director-general for innovation and technology at the World Intellectual Property Organisation in Switzerland.

Speaking in Cape Town at a conference on accelerating intellectual property and innovation in South Africa, Pooley said there wasn’t one model system to fit all needs, so each country should be treated on a case-by-case basis.

South Africa, he said, was now faced with the task of deciding whether to move from a registration-only patent system to a full or partial examination system. Currently, the responsibility resides with the applicant to ensure that a patent is valid not the patent office, unlike countries like the US that have full examination systems.

Pooley explained that the primary reason for full examination would be to avoid bad patents getting into the system, but a cost benefit analysis should first be carried out.

“Be sceptical about the assumptions on what the consequences are of having bad patents in the system. Even in the US we have economists who question the value of the examination system and point out the fundamental fact that less than 5% of the patents that go through the system and get issued ultimately have any commercial value at all.”

Pooley said that a full examination system was highly staff intensive. A minimum of 150 examiners with scientific or engineering qualifications would be required to provide the necessary quality to act as an international authority. However taking into account the current technology explosion, he said that 150 examiners was likely a conservative number.

United States Patent and Trademark Office (USPTO) deputy director Teresa Stenek Rea agreed with Pooley that the operation of examining patents required a lot of staff and said that the USPTO was struggling to keep up with its patent applications because of a lack of human resources.

While the USPTO has a goal of completing the first examination of a patent in ten months followed by the full examination being complete in 20 months, she said currently these time periods were 25 and 46 months respectively. Patent filings with the USPTO are increasing at 5% a year and so the problem was not going away.

“We’re having a really tough time keeping up with our examination and maintaining excellent quality. We have 6 755 examiners and because of the Patent Reform Bill passed on Friday, we will likely hire 1 200 examiners next year, another 1 200 examiners the following year and then 600 examiners after that. We think that our point of stability will be approximately 10 000 examiners.”

According to Rea, most USPTO examiners have multiple degrees not only in the sciences, but also in law.

South Africa’s Companies and Intellectual Property Commission registrar Elena Zdravkova said that while there were problems with the pure registration system of South Africa, a full examination system was likely to be onerous. A more attractive option would be a partial recognition system, where examinations that have been undertaken by other patent offices around the world would be taken into account to avoid duplication of work.

“Our national intellectual property policy is still in the making and will be tabled in Parliament maybe next month for public debate. So we wish to hear the opinion of the main stakeholders, the public, the government, the legal fraternity, the international community and then choose a way forward.”