Hmmm…small world. I live with a Patents Examiner. I didn’t realize that there were so few of them. Where do you live? I’m outside of Manassas; are you my neighbor?
The main tool that examiners use in looking for prior art (earlier documentation of inventions) is called EAST (Examiner Automated Search Tool) EAST searches various databases of patents (US and foreign) and patent applications (US and multinational via the Patent Cooperation Treaty.) EAST allows Boolean and proximity operators so that you can search (for instance) for (flat ADJ panel) NEAR3 (display OR monitor) to find the phrase “flat panel” within 3 words of either “display” or “monitor.” (There’s an older system called WEST (Web-based Examiner Search Tool) that some examiners prefer; It searches the same material as EAST but with a more Google-like interface.)
There are also a variety of non-patent literature (NPL) databases and periodical collections that examiners have access to but most of us view these as a fallback in case we can’t find what we need on EAST (I’m not saying that this is a good attitude, just a common one.)
There’s no automated data-mining tools. An examiner still has to manually look through the results of his or her searches and pick out things that he thinks are relevant to the case at hand. (Note that when I say manually I don’t mean physically; it’s all electronic these days, but examiners still have to sort through patents themselves.)
Verifying novelty is a big priority in this job. After all, novelty is one of the two biggest hurdles to getting a patent. (The other being non-obviousness.) That being said, novelty is the one that examiner’s most hope to disprove in order to make a rejection. (It’s harder for applicants to argue against and easier for examiners to write up.)
As an aerospace guy turned mechanical engineering guy, I can’t say that I’m too familiar with this area. I’ve heard that any software submitted for patent must be specified in the application as being contained “on a computer readable medium” or else it will be considered non-patentable subject matter (which strikes me as a ridiculously minor formality), but that’s as far as my knowledge of software patent procedures goes.
That being said, you’ve got me curious. If you sharing a little bit of what you know on the subject, I’d be appreciative.
The USPTO currently has a huge backlog of applications (between 700K and 1 million depending on who you ask.) As such, they are hiring examiners like crazy. The current plan is to bring in about 1200 new examiners annually until 2012 and we’re already past that goal for this year.
The process to become an examiner isn’t especially rough. A lot of the examiners I’m training with have industry experience, but a good number of us are straight out of college but there’s honestly so much new stuff to learn that neither group has a clear advantage that I’ve seen in terms of performance.
That being said, getting in is a lot easier than staying in. The job isn’t hard per se, it just isn’t for everyone. A lot of people would rather be out working in the industry and some (especially those for whom English is a second or third language) have trouble getting past the techno-legalese or just the regular old legalese. Personally, I like the legal aspects and the searching for information as much as I like the engineering that goes into understanding the inventions in the first place. I hope to stick around for a long time.
Interesting. Do you know what technology center/art unit (s)he is in?
I live in Burke, one of the suburbs of the city of Fairfax. It’s a bit far out but the local commuter train stop is a ten minute walk from my apartment and my office is about a ten minute walk from the Alexandria station so it works out well (especially when you factor in the public transportation subsidy.)
Well, I think I got all of them. If I missed anyone or missed the point of anyone’s question, let me know and I’ll correct my mistake next chance I get.
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Are you encouraged to find ways to reject an application? Does the number of rejections you make play a part in your job performance evaluations?
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With the current Court of Appeals view that the requiremnets for patentability (WRT novelty or inventive step) are set too low, has this affected the examination style of the USPTO?
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As an examiner, are you allowed to file patent applications in the US for your own inventions?
Here is a short list of software patents, most (if not all) of which are obvious to those reasonably skilled in the art. A small selection of the most egregious:
About patent 5,261,101: A calling convetion is a standard. I was under the impression that anyone could implement a standard required to interoperate with someone else’s software. If that isn’t the case, a calling convetion is still too trivial to be patented (there are usually only two or three general ways of doing it efficiently as dictated by the hardware, with trivial variations on each). Patent 5,247,674 is likely to be part of a standard as well, and required for interoperability in the same fashion.
I’m aware patents can be overturned by lawsuits. However, an open-source project run by volunteers would not have the resources to mount even a token defense and would likely have to cease production of their software at even the serious threat of a lawsuit, making invalid patents very useful in stopping certain kinds of legitimate competition. That is a flaw in the system as a whole but bogus patents just make it all the more worrisome.
OK, new topic: What do you think of patent trolls? A patent troll is a company whose only business is patent licensing and lawsuits. It acquires a patent it thinks it can convince a judge is being infringed by a company with deep pockets, then sues the company for infringing that patent. Meanwhile, it has no products and is not using the patent for anything except the lawsuit. Collect the danegeld, rinse, and repeat. (The rule change making submarine patents more difficult altered how easily a patent troll can work, but the USPTO’s apparent inability to find prior art regarding software patents balances it out in their favor again.)
OK, last post on this issue (unless requested otherwise): Wheeler has a very interesting page on the most important software innovations, and if you scroll to the bottom you will find a great collection of links from the anti-software patent perspective. They cover both the practical and the philosophical objections with plenty of examples of how the patent system is abused by current software patent practice.
It was all over the internet a little while ago that Microsoft received a patent for the functions of page up and page down keys.
What legal rights does that give them? Can they now pursue lawsuits against all other computer keyboard manufacturers?
I guess what I’m actually asking is: what’s the legal impact of a patent, especially on a product that has since become commonplace?
So I have an idea for a gadget. (Or device, or system – a thing, as opposed to software or method.) It combines existing technologies in order to perform a useful task. To my knowledge such a gadget has not been developed. However I do not have the ability to build a prototype, nor can I afford to have one built.
Basically, ‘Use [this] to do [this], and [this] to do [this]. [This] and [this] are used to produce a specified result.’ I describe the hardware, the way the result is produced, and how the product is used.
Is a fully-described idea patentable if I cannot produce a prototype?
I wasn’t aware of this practice but I’ve got to say that I don’t like it. The point of a patent is to allow the inventor (or the assignee) the exclusive right to the invention for a period of time in exchange for making the workings of the invention known to the public to encourage the further advancement of technology. As far as I care (and please realize that this is in no way the official opinion of the USPTO) if you aren’t going to exercise make use of an invention, you have no right to exclude others from doing so (patent or no.) It always makes me a little sad to see people using abusing system for profit at the expense of it’s intended purpose.
I haven’t had a chance to read the link in your second post, but I just wanted to point out/ask:
I noticed that none of the pats listed in this link are numbered above 5.5 million; the most recent (5,272,768) issued almost 15 years ago. Is the PTO still in the habbit of issuing patents on such things, or have we managed to get our acts together more recently (I fear the answer but am curious.)
Wikipedia has a good, well-cited article on patent trolls. I’m surprised it’s a new concept for you.
Yes. A patent gives its holder the legal right to stop others from making, using, selling or importing the patented invention so Microsoft has the right to sue anyone it feels is infringing. Whether they can win or not is another question. They would have to be able to prove to the court that they actually had the idea first (in rough terms; look up 35 USC 102 a, b and e for the specifics) otherwise the patent isn’t worth the paper it’s printed on.
Whether the product has become common place or not has no bearing on patentability. As long as the applicant can prove that the invention is novel and non-obvious and can obtain a patent (ie can avoid tripping over red tape,) the patent allows them to stop others in this country from making, using, selling or importing the invention described in the patent. Of course, most inventors will allow others to make, use, etc. their invention in exchange for royalties.
The concept isn’t entirely new to me. In the Academy, we’ve heard plenty about inventors (Lemelson comes to mind) sitting on piles of submarine patents for a profit. The idea of companies with no other purpose than to buy up patents and file lawsuits is what I wasn’t aware of.
We trainees honestly don’t get too much training in patent current events that don’t directly apply to the role of a patent examiner. I’d like to become better versed in it but I’ve obviously got a long way to go.
Beware. When combining two existing inventions, arguments of obviousness inevitably crop up (a little too often to be honest.)
Certainly. There’s no requirement that the inventor produce a prototype or even a photograph. As long as the disclosure is acceptable (it describes the invention well enough that a person of ordinary skill in the art could make or use it) and the invention has “credible utility” (we might ask from proof that your perpetual motion machine/teleporter/time machine actually exists and works,) we’ll probably never know if you’ve got a prototype or not.
It’s academic anyway. Although I have not seen my idea (a collision avoidance system for cars, prompted by being rear-ended twice last week) marketed on any vehicle, a quick search indicates that it’s actively being studied. Oh, well.
Yes and indirectly. Finding all of the problems (objections and rejections) with an application before making the first response to the applicant is called compact prosecution and it lets the examiner and applicant wrap up the case as soon and as smoothly as possible. (This is because the applicant gets a chance to amend his/her claims in response to an initial rejection so if (s)he knows everything that the examiner was able to, (s)he can presumable fix it (amend claims, swear behind references and argue points they disagree with) in order to get a patent issued.
If an examiner keeps finding new grounds for rejection and getting them shot down, the case can hang around for a while which will probably impact the examiner’s productivity and work flow (especially if this is going on with multiple cases) so it will likely play a part in the examiners performance evaluations.
I’m sorry but I haven’t been with the office long enough to have a real basis for comparison. The only examination style I know is the one that they’ve been teaching new hires for the past two and a half months. Sorry I couldn’t be of more use.
No. USPTO employees can’t file for US Patents until at least one year after leaving the employment of the agency.