The virtues of the unwritten "Doctrine of consistency"

In many of areas of life, we are told that consistency is the key to success. Want to feel better? Get more sleep. Want to lose weight? Exercise regularly. In both of these cases, the virtues of being consistent are self-evident. But as anyone that has ever owned a gym membership knows, just signing on the dotted line isn't enough. Consistency requires a certain degree of self-discipline and resilience. For many of us, it is difficult to achieve consistency without a positive framework of intent in place, such as a suitably SMART objective or tangible end-goal. When the going gets tough, experience suggests that self-motivation alone is seldom enough for well-meaning consistency to prevail in the long-term.  After all, is that not why so many people employ personal trainers?

This article considers what "consistency" means in the context of obtaining and enforcing patents. As patent practitioners, the virtues of being consistent are bestowed upon many of us from a relatively early age. But what does consistency look like in practice and what happens when consistency is upstaged by inconsistency, be it intentionally or otherwise?

What is "consistency" in patent practice and why is it important?

It goes without saying that striving for consistency only makes sense if we are trying to consistently do the right thing! In the context of patent practice, it seems reasonable to suggest that the primary purpose of consistency is to safeguard, so far is possible, patent validity. But the reach of consistency goes further than that and has wider implications for risk management, generally.

Consistency of argument is a frequently quoted example of the importance of consistency in patent practice. Adopting the same lines of argument before different Patent Offices and before the Courts is, as a general rule, accepted to be a good thing. The same goes for consistency of evidence. Consistency of practice is also very important. This might include, amongst other things, ensuring that the same prior art citations are made available to Patent Offices during patent prosecution and ensuring that external publications convey a consistent message when describing patented inventions. Aligning amendments to patent claims across multiple jurisdictions is another prudent example.

The consequences which arise from a lack of consistency in these areas of patent practice are often not fully realised until the validity of a patent is challenged. Such challenges present interested third parties with an opportunity to forensically review a patentee's actions in obtaining the contested patent. In some cases, post-grant amendments and/or reissue of the patent can provide mechanisms with which to correct inconsistencies which come to light after grant, but the availability of such "remedies" is often not without constraint. The unfortunate reality is that failing to be consistent in our everyday practice gives rise to downstream casualties in patent litigation time and time again.

How do inconsistencies arise?

Most R&D-based organisations have sizeable patent portfolios. However, in practice the nuances of patent law (of which there are many) are seldom well understood by company personnel outside the confines of the in-house IP team. This observation is not intended to be a criticism. After all, it is the reason why many companies choose to employ patent law specialists in the first place. However, the point to be noted is that a lack of internal awareness concerning patent law can give rise to inconsistencies in practice, with potentially serious consequences.

As an example, most scientists working within a corporate environment will have learnt from their company induction programme that they should not publish their ideas, or details of their inventions, in the scientific literature without first having given due consideration to the suitability of patent protection. Advice that is well heeded. However, once patent applications have been filed, there is a general acceptance within industry that, carefully vetted, non-patent literature articles follow suit. Whilst there is nothing wrong with this established practice in principle, problems can and do arise where the publication of such articles occurs whilst the prosecution of associated patent application(s) is ongoing. This problem arises, at least in part, because obtaining a patent generally takes a long time. Patent prosecution requires the submission of legal and technical arguments a number of years after a patent application is first filed and the nature of these arguments is not always foreseeable at the time of filing the patent. Also, the arguments filed during prosecution may, by necessity, require adaptation over time. In practice, this means that even a carefully vetted publication can, if made too early or without adequate foresight, cause irreparable future harm if the information that it contains is in some way at odds with arguments that have subsequently been submitted to Patent Offices or Courts.  It is a shame that, in many cases, the publication responsible for invalidating a patent of commercial significance is a document that the named patent inventor might (sheepishly) refer to as one of his or her own.

Of course, problems arising from a lack of consistency are not limited to those without an intimate knowledge of patent law. Patent practitioners are vulnerable to the same danger albeit for different reasons. In the example given above, the patent practitioner responsible for vetting the scientific publication in question may have been under internal pressure to approve the publication prematurely (it happens) or may simply have not have had an awareness of its significance at the time of it being approved (internal lines of communication are seldom perfect). The situation is compounded by the fact that patent prosecution can be fraught with complexity, particularly where a company has a large portfolio of patents in many countries. Although there exists a reasonable degree of harmonisation across national patent laws, it is very common that the same patent application comes under different scrutiny by different Patent Offices which may choose to raise different legal objections, based upon different pieces of prior art, at different times! Such practical challenges can lead to patents being issued within the same family with different claim scopes, the significance of which is not always evident to the practitioner in real time. After all, the temptation of a broad patent claim is something that even the most seasoned practitioner can find hard to resist and hindsight, as all practitioners are aware, is a wonderful thing.

The above examples are far from exhaustive but are intended to highlight that keeping consistency front and centre is not always straightforward in busy commercial environments where competing priorities exist, despite most inventors and patent practitioners well-meaning intentions.

How can we be more consistent?

The pitfalls associated with inconsistencies in patent practice can be very significant but, in most cases, can be significantly reduced with care.

The implementation of robust policies and procedures relating to patent prosecution and enforcement are to be encouraged, but are unlikely to suffice of their own accord. Even well-written policies have an innate tendency to gather corporate dust and therefore ongoing education is vital to ensuring that the relevant personnel are regularly reminded of the role that each individual plays in safeguarding patent validity through appropriate consistency of action. Self-responsibility also plays an important role; for example, as practitioners, questioning the consistency of our actions during prosecution before paying an issue fee and basking in the (relative) glory of another issued Letters Patent is likely to be time well spent.

In much the same way that the role of the personal trainer is to encourage consistent exercise, the unwritten "Doctrine of Consistency" plays an important role in patent practice. Relatively simple actions, done consistently, can play an important role in managing the considerable legal and commercial risks associated with patent procurement and enforcement.