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Inside Look at Patent Examination
KingFatty writes "This article written by a former patent examiner describes patent application as a matter of luck when it comes to the competency of the examiner. "Every examiner starts with his or her first patent application after receiving just two weeks of training at the USPTO Patent Academy, where he or she learns the basics of the Manual of Patent Examining Procedure. Will your patent application be examined by that newly recruited examiner? If so, will the examiner's supervisor (supervisory patent examiner or SPE)[be] sufficiently skilled in the art in which the patent application is classified?" Gives insights as to the problems with the US Patent and Trademark System."
Isn't there a legal state that if you have a patent pending (in the system but not approved yet) you can use it as if it were approved until they decide. Ever seen "patent pending" on a product?
So we either punish the one puny inventor or we punish the world, pick one. Let's say the internal combustion engine was an idea some guy patented a long time ago. Then, the invention was passed over by legit companies actually want to manufacture this idea because of the vast royalties they'd have to pay some guy with an idea he had while taking a shit. Where would we be today? Damn, where did I park my horse and buggy...
you dont need a J.D. to take the patent bar, OR to be a patent examiner...
"All examining positions require at least a bachelor's degree in computer science, physical science or engineering"
Apparently a bachelor's degree ain't what it used to be...
--Stephen
Did you ever notice that *nix doesn't even cover Linux?
Q.
Insert Signature Here
Patent examiners are not usually attorneys -- they are often engineers, biologists, and chemists.
Patently Obvious
As a former USPTO examiner, I can say that it is not a matter of prior art availability. An examiner has pretty much all of the prior art they wish for in their examination. It is not just the old patent "shoes" and prior patents. Examiners have access to a large number of private databases, the Internet, foreign language translation services ... what have you.
What is limited is the time the examiner has to thoroughly investigate all possibly relevant prior art. Patent examiners in the USPTO are subject to "productivity" expectations, and if they spend too much time on any particular application, then another application will suffer from insufficient review. Moreover, it is highly unlikely that any particular patent application will come back to bite them. The system (like many others) is geared toward looking at numbers and not quality.
Working as a patent agent at a top IP law firm, I am probably biased. Nonetheless, I will provide you with your answer. People that patent their ideas have made a working model of their invention in a way. In order for a patent, your application has to "enable one skilled in the art at the time the invention was made" to build and operate the invention. You can't patent ideas. You can't say "i want to patent an antigravity device." However, if you come up with a way to make an antigravity device you have to disclose how to make one. If you do not disclose how to make it then the patent will not be valid because 1) it will not be an enabling disclosure; and 2) you will not have described the best mode. Now, we want people to patent things. Patents are one of the reasons why technology is blooming. Before the patent system was utilized, companies would keep ideas secret as ... trade secrets. Now, they are utilizing the patent system in which the government gives them a 20 year limited monopoly (i.e., the reason why there will never be an antitrust issue because of a patent, just business practices) in exchange for the public disclosure of how to make and use the invention.
Those are the facts.
Jeff
That already happened. US patents now last 20 years from date of filing, not 17 from date of issue.
See 35 USC 154, specifically section (a)(2).
The term of a patent is 20 years from the filing date assuming it is granted. It used to be 17 years from the issue date, but they changed it precisely because of that reason.
"I have a porkchop, you have a porkchop. I have a veal, you have a veal".
Since patents are kept secret from the time filed to the time issued, no one really knows if there is a filed patent or not.
Patent applications filed on or after November 2000 are published within 18 months of filing.
See the USPTO notice
Of course there are exceptions but a part of proving infringement is proving your competitors knew about the contents of the patent application. IANAL but if you delay the publication and didn't notify your competitors that they are possibly infringing, the judge will not be smiling with you and you would have made some lawyer quite happy.
Just a note re: the contents of your link:
An application shall not be published if an applicant makes a request upon filing, certifying that the invention disclosed in the application has not and will not be the subject of an application filed in another country, or under a multilateral international agreement, that requires eighteen-month publication.
So unfortunately, you can still keep things completely secret for a very long time, assuming you're willing to forgo patent protection in other jurisdictions. Given those other jurisdictions' negative perceptions of software/business method/ridiculous patents, I still see secrecy as an issue. While you'd expect a novel microchip design to get published, your one-off of one-click-purchase is very likely to still sit unnoticed until you can spring it on someone later.
By INQUIRER staff : Donnerstag 15 April 2004, 14:03
*A CONFERENCE* chaired by the Federal Trade Commission, the National Academy of Sciences and the Berkeley Center for Law and Technology kicks off in California in a few hours time.
The idea is reform the patent system without stopping innovation, but the industry is along there in the shape of giants Intel, Microsoft, Symantec and others, and we're sure they'll try to pursue their own agenda.
There will also be representatives from the European Patent Office and the US Patent and Trademark Office.
Luckily, they are counterbalanced by legal organisations and academics.
The agenda for the workshop is here http://www.ftc.gov/bcp/workshops/patentsystem/pate ntsystemagenda.pdf, and
there's a very lengthy discussion document about proposed reform on the FTC
site, here http://www.ftc.gov/os/2003/10/innovationrpt.pdf.
The FTC document proposes a number of changes to the current system including a new admin procedure to challenge a patent's validity without having to go to law, allowing courts to find patents invalid on the preponderance of evidence rather than clear and convincing evidence, and the limiting of awards of "treble" damages.
It's pretty clear that for many large companies, patent actions have become a wing of marketing. Kicking off big patent cases can tie a smaller competitor up for years as the painful battle continues through the courts. Let's hope sanity prevails. But don't hold your breath for that.
Day 1: Thursday, April 15, 2004 at the Bancroft Hotel
1. 12:00 - 1:00 pm, Press Conference
- Mark Myers: NAS & Xerox Corporation
- Commissioner Mozelle Thompson: FTC
1:30 - 3:00 pm
Overview of the Patent System and FTC Proposal for Reform
- Susan DeSanti: Senior Policy Analyst, FTC
- Prof. Peter Menell: BCLT & Boalt Hall School of Law
- Prof. Robert Merges: BCLT & Boalt Hall School of Law
Day 2: Friday, April 16, 2004 at the Bancroft Hotel
8:00 - 8:30 am
Opening Remarks
- Dean Designate Chris Edley: Boalt Hall School of Law
- Robert Merges of BCLT and Boalt Hall School of Law
- Mark Myers: NAS & Xerox Corporation
- Commissioner Mozelle Thompson: FTC
8:30 - 9:40 am, Non-obviousness Panel (Reinvigorating the Non-obviousness Standard)
- Rochelle Dreyfuss: New York University
- Rebecca Eisenberg: University of Michigan
- Ron Laurie: Inflexion Point Strategy, LLC
9:45-11:00 am, Opposition and Post-Grant Review Panel
- Robert Blackburn: Chiron Corporation
- Prof. Joe Farrell: Economics, UC Berkeley (CPC)
- Bronwyn Hall: Economics, UC Berkeley
- Dietmar Harhoff: European Patent Office
- Steve Kunin: Patent and Trademark Office
- Prof. Robert Merges: BCLT & Boalt Hall School of Law
- Douglas Norman: Eli Lilly
11:00 - 11:15 am, Break
11:15 am - 12:45 pm, Litigation Panel (Including Presumption of Validity)
- Mark Janis: University of Iowa
- Mark Lemley: BCLT & Boalt Hall School of Law
- Lynn Pasahow: Fenwick & West
- James Pooley: Milbank, Tweed, Hadley & McCloy
- Matthew Powers: Weil Gotshal & Manges
- Arti Rai: Duke University
12:45-2:00 pm., Lunch
2:00 - 3:45 pm, Industry/Institutional Issues Panel
- Carl Shapiro: Haas School of Business, UC Berkeley (co-moderator)
- Commissioner Mozelle Thompson: FTC (co-moderator)
- Robert Baechtold: Fitzpatrick Cella Harper and Scinto & AIPLA
- Robert Barr: CISCO
- Bart Eppenauer: Microsoft
- Sean Johnston: Genentech
- Jay Monahan: eBay
- Ron Myrick: Finnegan, Henderson, Farabow, Garrett & Dunner
- Kulpreet Rana: Google
- Robert Sacoff: Pattishall, McAuliffe & ABA IP Section
- David Simon: Intel Corporation
- Herb Wamsley: Intellectual Property Owners
3:45-4:00 p.m., Concluding Remarks
Commissioner Mozelle Thompson
Open Standards Portal
actually most applications are reviewed by primary examiners, they have to process a lot more applications than junior examiners
the number of hours per case is dependant on paygrade and technology, so for example a gs-5 examiner (basically someone straight out of school) might have to do 2 cases a biweek, while a primary examiner might have to work on 8. Electrical/computer technologies get more hours than mechanical/chemical.
The more senior guys dont need as much time as they readily know what references to use, i.e. they spend less time searching as they have no need too.
Turn over rate in the first year is rather high as most engineers have a hard time working on a quota system. Additoinally, an expereinced examiner can leave the office and make considerably more money as a patent agent or attorney or searcher for a private firm. Salarys were increased signifigantly a few years back as retention was a problem and there were 15% signing bonuses.
Examiners with less than 2 years of experience is common as the office has plans to hire roughly 750 examiners a year for the past few years and the next few years as the current application backlog is 500k, that means applications are taking up to 4 years to get a first office action!
What the article fails to disclose the the review programm the new certification process, the primary examiner program, quality review, the ongoing training required, and the entire year long training process for a new examiner.