Reducing uncertainty in the patent application procedure – insights from malicious prior art in European patent applications

Achieving patent protection for an invention is a costly procedure. The patenting process in front of the patent office itself is frequently associated with substantial uncertainty about the outcome. This paper aims to identify measures to reduce this uncertainty and increase efficiency in patenting by investigating so-called world patent applications in chemicals, pharmaceuticals, and biotechnology that were subsequently not granted by the European Patent Office (EPO). Examination reports of these documents were searched for references that were regarded malicious for novelty or inventiveness of the patent application. The results from studying these references provide several implications for patent applicants in chemicals, pharmaceuticals, and biotechnology: to reduce uncertainty in the patenting procedure, patent applicants should a priori search both patent and nonpatent literature thoroughly. Novelty is in many cases anticipated in patent literature. Nonpatent literature and, in particular, technological areas closely related to the application in many cases anticipate the inventive step. Furthermore, inventors and applicants were aware of a considerable share of malicious prior art, they frequently appear to overestimate both novelty and inventive step of their “invention”. During a further stage of the examination procedure, when the International Search Report for the world patent application is available, applicants seem to have a good chance that no more malicious prior art will be found in the subsequent examination when no references are contained in the search report coded with X or Y.