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Inside Look at Patent Examination

Posted by CmdrTaco on from the something-to-think-about dept.

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."

7 of 214 comments (clear)

  1. Peer review by sweet+cunny+muffin · · Score: 5, Insightful

    Why aren't patents exposed to peer review, like academic articles are? The invention (if it is) will be protected by the patent pending laws while it's reviewed.

    1. Re:Peer review by nodwick · · Score: 5, Insightful
      Why aren't patents exposed to peer review, like academic articles are? The invention (if it is) will be protected by the patent pending laws while it's reviewed.
      Having had some experience with the academic peer review process, from both the reviewer and reviewee perspective, I feel obligated to point out that the peer review process is far from perfect as well. Off the top of my head, a couple of points to consider:

      1. Finding qualified reviewers. Many academics in my field (network theory) have been complaining about "reviewer burnout". Simply put, any popular field will have lots of people submitting papers [patents, in your analogy] in an effort to boost their publications. Oftentimes, many of these people will submit stuff that's obviously not publication-quality material, but reviewers still have to spend their time first to evaluate it and then to produce a good writeup justifying rejecting it. To be sure, there are still good papers, but the general experience seems to be that the signal-to-noise ratio of submissions is directly inverse to the popularity of the field. Imagine how much worse this would be for patents, where the payoff is not just CV bragging rights but actual profit dollars.

      The end result is that it's difficult to get quality reviews, because the reviewers (who, by definition of peer review, tend to be very busy professionals who already have a lot to do) get burned out and are tempted to just breeze through reviews. Since the patent office gets many more patent applications than your typical journal, I'd imagine this would be an even bigger problem for patents.

      2. Finding honest reviewers. By making patents peer-reviewed, you're forcing applicants to disclose the details of their technology to their peers before their patent is accepted. A similar situation exists in academia where often multiple research groups are working on the same research project. Sadly, it's not unheard of for particular reviewers to stonewall acceptance of papers because they have similar results which they are submitting / hope to submit soon to another journal. Imagine how, in the case of patent review where people are competing not just for notoriety but for profits, an even bigger incentive would exist for this sort of thing to go on.

      I understand that your point is that it would be nice to have highly qualified individuals doing patent reviews, which would hopefully inject more common sense into the proceedings. I'm just saying that setting up such a system may hhave its own problems to iron out.

  2. Turnover by Talking+Toaster · · Score: 5, Interesting

    Every examiner starts with his or her first patent application after receiving just two weeks of training

    So, what is the turnover rate at the USPO?
    What percentage of the examiners are seasoned examiners of patent applications etc.
    What percentage of the examiners have worked there for less than 2 years?

    --
    Howdy Doodly Doo!
    Anybody want some Toast?
  3. Always Reject on the First Round by StateOfTheUnion · · Score: 5, Interesting

    I was talking to a lawyer about patent applications once . . . his comment was that they are always rejected on the first round, so it was best to actually not submit all documentation in the first round so that there would be additional documentation to submit during the second round. His claim was that patent employees are overworked and often underskilled (because they are required to have such a broad breadth of knowledge) and if they don't know a lot about the particular technology, they would reject the application based on some general ground rules . . . if you gave a lot of extra data, etc. in the resubmittal it would often go through. I don't know if this is a common practice and IANAL, but I think its more than a bit sad that a lawyer would have such a cynical view . . . and perhaps even more sad if the system is actually deserving of this cynical view.

    1. Re:Always Reject on the First Round by radiumhahn · · Score: 5, Interesting

      I'm 4 years into a patent examination... I wish I could go back and reword some of the original text... You need to define everything upfront because they wont let you change your application other than to clarify better what you have already claimed. You'll have to file a new patent for anything extra. I am pretty sure I got a bad draw...one of the rookies... my advice is to use understandable claims that are phrased in a way that AI and indexing software will never find any matches... If you use popular words and phrasings you are asking for trouble.

  4. Re:Hamstrung When Looking for Prior Art? by Anonymous Coward · · Score: 5, Informative
    As best as I can tell the examiners are limited to prior patent applications and official publications in searching for prior art.

    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.

  5. Re:Huge Patent Issues by jmullen · · Score: 5, Informative

    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