The thing about individual examiners getting sued was said in a presentation here to explain why US examiners will almost never file a partial search report in the case of non-unity on a world patent application (PCT). So it was rather an "oral disclosure"!
I am aware that the USPTO examiners are also specialists, but since it was late last night when I posted, I may have got my wording wrong (I certainly got my formatting wrong!) and implied that they are not.
Talking of sueing, (here's an oral disclosure again!) there was a guy who filed a US patent for a perpetual motion machine. It was turned down, so he sued, and eventually there was a hearing in Congress or somewhere and they tried to FORCE the USPTO to grant a patent for something that was absolutely unpatentable, cos it didn't work! But anyway...
As with many of the patent threads on/., there's a lot of guff going around, so I'll make some comments about patents in general, and some specific USPTO comments.
1. Patentability. A patent has to be novel, inventive and industrially applicable. In the EP system it also has to make a 'technical contribution to the art', but in the US it doesn't, hence the business methods & software patents which are deemed 'non-technical', and therefore not patentable for EP.
Novelty means that the features described in claim 1 have not been disclosed in that form before, taking the broadest possible reading of the claims.
Inventivity is rather a harder prospect. To destroy invengtivity, the examiner starts from the best prior art (i.e. the document closest to claim 1). He then has to formulate the 'remaining problem', and then look for other documents in a similar field that solve the same problem, and it has to be obvious to the 'man skilled in the art' to know to combine these two documents to arrive at claim 1. This is hard work!
2. Prior Art: whoever said earlier that it has to be disclosed in the US for a US application is talking through the wrong hole. If it's written in ancient Chinese in a monastry up a mountain in Tibet it's prior art, provided that anyone can go to this monastary and go read it. Even if they don't read ancient Chinese. Many US search reports only contain US documents, and that's just sloppiness at the USPTO and winds me up (especially as they are often not relevant at all!). Examiners have access to all sorts of prior art, not just patents; in case you haven't spotted it by now, I'm an examiner. I've cited standard textbooks in my domain as novelty-destroying prior art. There's about 100TB of data available to examiners at the major organisations. Also, if you go into an open meeting and discuss your invention, that's also prior art against you as well, known as an Oral Disclosure. But we hardly ever use that.... Yes, your own prior art is used against you, and in fact that is often where we start to look.
3. Priority: In the US, there's an 'invented 1st' system, and in the rest of the world it's 'filed first'. Simple as that. So there's no arguing over here, unlike in the US over who should have the patent!
4. USPTO examiners, as government employees, are personally liable for any mistakes that cost applicants money, and can be sued. Hence, if something possibly patentable is denied, the lawyers take the examiner to court and prove that a patent _should_ have been granted, then the examiner is personally liable for any profits lost by the company due to loss of protection. And on a civil servant's salary, that's not good. Since these things are resolved in the courts in the US, not internally like in the European offices, there's an awfully large incentive to grant anything iffy at almost all costs. Even things that are physically impossible. And I have anecdotes, but since they relate to ongoing files I cannot discuss them. Would you like to work under that pressure? I know I wouldn't.
5. Patent examining (at least in Europe) is not a rubber-stamping operation. We work on the basis of getting a search report and a first written opinion out of the door in just under 2 working days. It's a bit quicker in the States, as I believe they're only allowed to allocate 3 or 4 hours for a search.
6. Examiners: In offices in Europe we're all technical specialists in our fields as well as being linguists, and we take a very professional attitude to our searching.
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The thing about individual examiners getting sued was said in a presentation here to explain why US examiners will almost never file a partial search report in the case of non-unity on a world patent application (PCT). So it was rather an "oral disclosure"!
I am aware that the USPTO examiners are also specialists, but since it was late last night when I posted, I may have got my wording wrong (I certainly got my formatting wrong!) and implied that they are not.
Talking of sueing, (here's an oral disclosure again!) there was a guy who filed a US patent for a perpetual motion machine. It was turned down, so he sued, and eventually there was a hearing in Congress or somewhere and they tried to FORCE the USPTO to grant a patent for something that was absolutely unpatentable, cos it didn't work! But anyway...
Apologies for the formatting - first post, pressing the wrong button, and not discovering that carriage returns are not automatic! Sorry!
As with many of the patent threads on /., there's a lot of guff going around, so I'll make some comments about patents in general, and some specific USPTO comments.
1. Patentability. A patent has to be novel, inventive and industrially applicable. In the EP system it also has to make a 'technical contribution to the art', but in the US it doesn't, hence the business methods & software patents which are deemed 'non-technical', and therefore not patentable for EP.
Novelty means that the features described in claim 1 have not been disclosed in that form before, taking the broadest possible reading of the claims.
Inventivity is rather a harder prospect. To destroy invengtivity, the examiner starts from the best prior art (i.e. the document closest to claim 1). He then has to formulate the 'remaining problem', and then look for other documents in a similar field that solve the same problem, and it has to be obvious to the 'man skilled in the art' to know to combine these two documents to arrive at claim 1. This is hard work!
2. Prior Art: whoever said earlier that it has to be disclosed in the US for a US application is talking through the wrong hole. If it's written in ancient Chinese in a monastry up a mountain in Tibet it's prior art, provided that anyone can go to this monastary and go read it. Even if they don't read ancient Chinese. Many US search reports only contain US documents, and that's just sloppiness at the USPTO and winds me up (especially as they are often not relevant at all!). Examiners have access to all sorts of prior art, not just patents; in case you haven't spotted it by now, I'm an examiner. I've cited standard textbooks in my domain as novelty-destroying prior art. There's about 100TB of data available to examiners at the major organisations. Also, if you go into an open meeting and discuss your invention, that's also prior art against you as well, known as an Oral Disclosure. But we hardly ever use that.... Yes, your own prior art is used against you, and in fact that is often where we start to look.
3. Priority: In the US, there's an 'invented 1st' system, and in the rest of the world it's 'filed first'. Simple as that. So there's no arguing over here, unlike in the US over who should have the patent!
4. USPTO examiners, as government employees, are personally liable for any mistakes that cost applicants money, and can be sued. Hence, if something possibly patentable is denied, the lawyers take the examiner to court and prove that a patent _should_ have been granted, then the examiner is personally liable for any profits lost by the company due to loss of protection. And on a civil servant's salary, that's not good. Since these things are resolved in the courts in the US, not internally like in the European offices, there's an awfully large incentive to grant anything iffy at almost all costs. Even things that are physically impossible. And I have anecdotes, but since they relate to ongoing files I cannot discuss them. Would you like to work under that pressure? I know I wouldn't.
5. Patent examining (at least in Europe) is not a rubber-stamping operation. We work on the basis of getting a search report and a first written opinion out of the door in just under 2 working days. It's a bit quicker in the States, as I believe they're only allowed to allocate 3 or 4 hours for a search.
6. Examiners: In offices in Europe we're all technical specialists in our fields as well as being linguists, and we take a very professional attitude to our searching.