Reducing uncertainty in the patent application procedure – Insights from invalidating 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 to invalidate novelty or inventiveness of the patent application. The results from studying these references provide several implications for patent applicants in chemicals, pharmaceuticals, and biotechnology: novelty is in many cases anticipated in patent literature. Dispersed non-patent literature frequently anticipates the inventive step. Patent searches in the same 4-digit IPC class as the original invention reveal the majority of all relevant prior art in patents. Furthermore, inventors and applicants were aware of a considerable share of invalidating prior art. This can be explained by a gambling behavior in the patenting procedure of large firms, while particularly SMEs encounter difficulties in evaluating both novelty and inventive step of their “invention”.