Decision - Making and Quality in the Patent Examination Process: An Australian Exploration

Abstract

The quality of patents granted by national patent offices is currently the focus of significant investigation worldwide. The vast majority of this work examines the quality of the end-product of the examination process - the patents themselves. This Working Paper is founded upon the perception that it is equally important to explore the quality of the process that precedes the patent grant - the examination of patent applications by patent office examiners. The Paper argues that an effective way to assess the quality of the process is to consider the decision-making practices adopted by examiners. This perspective rests on the recognition of the importance of decision-making in the patent examination process - decisions made range from establishing search strategies for prior art to the final assessments with respect to novelty and inventive step. This aspect of the process is considered here in the context of work on decisionmaking theories found in psychology. Various models of decision-making are explored in this Paper that may be applied to the patent examination process in order to deepen our understanding of the granting of patents. This Paper represents the start of a decision-focused approach to assessing the quality of the patent system. The models presented here provide a grounding for future, empirical, research into the minutiae of the examination process. A number of approaches for such research rounds out this Paper. Although the discussion of is founded on a description of the processes within IP Australia, any research based on this work will contribute to the optimisation of the patent system globally.