Examining Ambiguities in Patent Examination Guidelines by Dr. Siva Thambisetty

Examining Ambiguities in Patent Examination Guidelines by Dr. Siva Thambisetty

As part of the IP Osgoode Speaks Series, Dr. Siva Thambisetty, an associate professor of law at the London School of Economics, visited Osgoode Hall Law School to speak on the subject of patent dialect. The main focus of her talk, entitled, "Is Patent Law Evasive or Merely Elusive?", was to highlight the issue of ambiguities that exist in the European patent dialect and to discuss the potential motivations behind reserving these ambiguities.

Due to the international and extra-jurisdictional aspects of enforcing and administrating patent law in general, and similarities between Canadian and European patent regimes, the concerns and issues raised in her research are relevant in Canada and could trigger similar discussions regarding the Canadian patent system.

Patent law and Language

Is there anything inherent in patent law that makes it more susceptible to ambiguities than other fields of law? Dr. Thambisetty posits that patent law works as an intermediary between law and other fields of knowledge, such as science and commerce, which have their own dialects and languages. One can think of patent law as an interdisciplinary field, whose dialect is the common denominator of many mutually exclusive technical languages. This interaction leads to the creation of non-standard terms in patent law. Further, due to this unique position of patent law, the scale of non-standard terms that are used in this field is considerably larger than any other field of law.


Guidelines on Writing Patent Applications and Expectations 

The Guidelines for Examination in the European Patent Office are written by one branch of the European Patent Office (“EPO”) to aid the EPO in its examining role. Guidelines are often used and quoted in the EPO’s decisions. But they are not considered to be law and therefore are not binding. The EPO follows the guidelines in its decisions, however, it can also refrain from following them, on the basis that guidelines do not constitute law.

While the guidelines are not legally binding, patent applicants are expected to follow them in drafting their applications, and as a consequence, there is an expectation imposed on the applicant by the EPO.  How does the EPO justify this inspirational role of its non-binding guidelines? According to Dr. Thambisetty, the EPO's institutional power over the administration of patent law enables them to evade justifying their decisions.


Purpose of Ambiguity: Illusion of Legitimacy

One important role that ambiguity plays is that it adds to the legitimacy of the institution. Dr. Thambisetty argues that ambiguity is like an "endowment" to the office to give it legitimacy. The EPO, by exercising their power over rhetoric and language of the legislation, has kept the provisions ambiguous to give the appearance that special knowledge and expertise is required when dealing with the legislation.  According to Dr. Thambisetty, this appearance serves two important and intertwined purposes which when combined, gives the institution the illusion of legitimacy.

First, it gives the EPO authority to exercise a relatively unlimited power over applicants and agents. This provides a possible answer as to why the EPO can impose expectations and not abide by them itself.

Second, it solidifies the EPO's position amongst other governmental institutions. No other governmental institution can compete with the EPO, as they lack sufficient expertise and knowledge when dealing with patent legislation. Therefore the EPO faces no competition in the regulatory sphere.

Dr. Thambisetty concluded her talk by emphasizing that an institution, which navigates ambiguity, can exercise a great deal of power over those who come within its jurisdiction. As long as this power can be enforced and harnessed, that institution has an incentive to continue its ways. In her opinion the change has to come from inside the institution.  So the question is, how much ambiguity are we willing to accept?


Nazli Jelveh is an IPilogue Editor and a JD candidate at Osgoode Hall Law School.