Ask the Patent Examiner

Miscellaneous and Personal Stuff I Must Share
1

Hallo everybody!

Well, I have been reading a lot of “Ask the…” threads… And, as far as I could see, there was no “ask the patent examiner” thread there. So, I thought I would offer myself to answer whatever questions I could!

I am a patent examiner working for the European Patent Office (E.P.O.) in its branch of The Hague (Netherlands), with 11 years’ experience. The E.P.O. offers an “integrated” European patent (basically, you apply only once and can end up with patents that are valid in 30+ countries).

So, ask away! I will gladly answer whatever you ask. If I don’t know the answer, I will say so. There are very few things I cannot talk about, but one of them is rather important: I cannot say anything about the status of patent applications in the middle of being examined. When it comes to patents, I can only speak about patents that have been, at the very least, pre-published (at that point, the contents of the application become public domain). So, if you or a friend of yours has applied for a patent at the E.P.O. and it is being searched or examined, I am sorry but I cannot say anything about what the situation with it is.

For (practically) anything else, I can answer freely (as long as I know the answer :wink: ).

Waiting for your questions! :slight_smile:

JoseB at your service.

2

What is the most unusual ‘item’ you’ve approved? denied?

3

Have you ever seen a patent and went, “WOW! This is a fantastic idea!”

Any moments where you were just SO happy to have your job so that you could be a part of the idea, etc.

4

What is the general opinion of software patents ad a concept? Related question: how much time and effort do you need to research prior art, versus the time and tools you have to use?

5

How specific does a patent have to be? Like if it mentions specific materials (I have something specific in mind so I’ll use my example) such as “dense foam balls, 2” in diameter" does that mean that someone could make an identical product except with a different material or diameter without violating the patent? If that’s the case, how vague can you be and still get a patent approved?

6

Well, the patents that I work with tend to be rather “bland”, nothing particularly “unusual”… If anything, I’d say that it would have been a very clever way of saving power in microprocessors by adjusting several parameters depending on the load.

The most unusual thing I ever denied was some guy who sent us a patent application the size of the Manhattan phone book, written in rather obfuscated language. It took three of us (two colleagues and myself) almost three weeks of effort to unravel and understand that monster.

Basically, the guy wanted to patent the internet, and I guess he was hoping that we wouldn’t really read this thing and would just rubber-stamp it. The progenitor-copulator cost us a lot of time and work.

Now, things that other people have seen… I have seen patents for the weirdest stuff. Like, for instance, a talking vibrator.

[QUOTE=drewtwo99]
Have you ever seen a patent and went, “WOW! This is a fantastic idea!”

Any moments where you were just SO happy to have your job so that you could be a part of the idea, etc.
[/QUOTE]

Absolutely! There are tons of absolutely clever things there. I remember seeing an invention that (in theory) could be adapted to existing cars, in the form of a flywheel that would store energy while the vehicle was moving, and which would be used to get the car moving after having stopped (for instance in a traffic light). According to the numbers in the patent, it could give non-negligible fuel savings. And many more…

And yes, there are moments where I am very happy to have this job. Especially when I see something clever and worthwhile that has been submitted by small companies or stand-alone inventors – I feel very happy to be able to somehow “reward” them.

Other times I have felt rather happy (in a slightly nasty-ish way) when denying patents to Microsoft, Apple, IBM and other big companies like that… Especially when it is rather obvious that what they ask for is stupid :stuck_out_tongue:

[QUOTE=Typo Knig]
What is the general opinion of software patents ad a concept? Related question: how much time and effort do you need to research prior art, versus the time and tools you have to use?
[/QUOTE]

Ooooh boy, software patents… In the interest of full disclosure I must say that I work with patents in the computer field, and many of them may be considered to be “software patents”.

Now, I must also say that the USPTO works somewhat differently from us. In the E.P.O., for you to have any chance of obtaining something that can be considered a “software patent”, you must:

(1) write your patent so that what you ask is the combination of “a machine” plus “whatever it is running on it” (not the software per se).

(2) make clear that the combination of that machine and what you run on it produces a “technical effect” that is not self-evident or immediately deducible from each of those two elements separately.

My personal opinion about software patents – I am cautiously OK with the concept, as long as strict guidelines are followed and it is clear that the final result won’t block whole avenues of study. I am opposed to “business method” patents, and I am glad that the E.P.O. took strong steps to reject that kind of patent in recent years.

Finally, so far we have enough time to research prior art with reasonably good tools… However, the trend for the future appears to be to squeeze us for more and more production. I am uneasy about that. In a few years, if we don’t increase the amount of examiners, we won’t have enough time to do proper searches. That worries me.

7

The more specific, the better. The trick is for you to be specific about the most absolutely essential aspect of your invention – That without which your invention is not what it should be.

Let me explain – The process of getting a patent granted can be compared to fencing off some land for your farm.

You begin by putting a fence around the land that you want to protect. Obviously, you will want that to be as big as possible! In patent terms, this means wording your claims in such a way that they are vague enough to cover, not just what you are actually trying to protect (your invention), but also some “space” around it.

You send that application to us, we read it, search it, see that you are asking for too much, and send you a letter saying, basically, “this, this and this is unacceptable. You must re-write this, this and that, and if you leave X, Y and Z, it would be possible to have a grantable patent. Check the documents we cite in our search report”.

Usually, you read that, and send us a letter that politely says: “What you say is bullshit. In my patent, R, S, T and U are essential elements of my invention, they are inventive and should be allowed. Besides, your cited documents don’t invalidate A, B and C, because of this, this and that”.

We read your reply, and write back, saying “We are sorry, but R, S and T are really not inventive because of this and the other. We may accept U, but A, B and C are definitely invalidated by the documents we cited because of all these reasons”.

And so on. In the end, both parts agree to a certain “area” being fenced, and that is what ends up in the final patent as granted.

Now… IF someone manages to change those “essential features” enough, even though their invention may functionally be the same as yours, a patent on the new features may be acceptable.

The classical example is the Wright Brothers. When they invented their flier, they immediately patented their method of control (warping the whole surface of the wing), and pursued VERY aggressively potential patent infringements. For a while they were the ONLY ones who could do anything when it came to planes, and that actually stifled research.

But some people came up with the idea that perhaps it was not necessary to warp the whole wing to achieve control… Perhaps warping only a part of the wing would be enough? Thus ailerons were born – And they were different enough from the Wright system that they could be considered novel. Also, they provided significant advantages over the Wright system (less complex, easier to manufacture, higher reliability). The result? Airplanes have been using ailerons for lateral control ever since.

(Ironically, it was discovered much later that a guy named Boulton had patented ailerons for gliders… IN 1868. If that patent had come to the attention of the patent examiners in 1902, the Wright brothers would not have been granted their patent for lateral control. Of course, the later patents for ailerons would likely not have been granted, either…).

8

How do you feel about Patent Trolls, companies that do nothing but buy patents and sue everyone they can with them, while doing nothing worthwhile with the patent.

How do you feel about mega-companies buying millions of dollars worth of patent portfolios in a never ending patent-arms-race?

9

Are you working on theoretical physics in your spare time?

Brian

10

Can you tell the cat story?

11

How much technical knowledge do you have or have access to.How do you know if the company which is patenting a new medication has just not added food flavoring to it’s pills. While not the beat example, I am sure you get the gist.

12

have you ever seen applications in ECLA classes F03B17/04 or F03B17/00B?

13

Thanks for your questions, and very sorry for the delay in answering! Let’s go… :slight_smile:

[QUOTE=Amblydoper]
How do you feel about Patent Trolls, companies that do nothing but buy patents and sue everyone they can with them, while doing nothing worthwhile with the patent.

How do you feel about mega-companies buying millions of dollars worth of patent portfolios in a never ending patent-arms-race?
[/QUOTE]

Patent Trolls – I understand that what they do is technically legal, but I truly dislike them. I think it is a perversion of the basic purpose of the patent system.

Regarding your second question, it is a natural consequence of patents having become considered a metric for how valuable a company is, or how “good” it is. To be honest, I think it ends up being an exercise in futility. It is not uncommon for those companies that buy patents by the truckload to end up with useless stuff.

I must say, however, that very often those companies that buy huge loads of patents end up letting many of them lapse (through not paying maintenance fees) because they see that they have become irrelevant.

[QUOTE=N9IWP]
Are you working on theoretical physics in your spare time?

Brian
[/QUOTE]

I like theoretical physics and try to keep up to date with the latest developments (my formation was as a computer engineer with a focus in robotics).

Also, let me get back to you with this neutrino thing from the CERN, I have an idea for a couple of papers… :wink: :wink: :wink:

[QUOTE=Nava]
Can you tell the cat story?
[/QUOTE]

You mean the great and wonderful patent by the immortal Arthur Paul Pedrick? :smiley: I can, but I should leave it for a separate post, because it is LONG :slight_smile: But no worries, Nava, I will! ^.^

[QUOTE=AK84]
How much technical knowledge do you have or have access to.How do you know if the company which is patenting a new medication has just not added food flavoring to it’s pills. While not the beat example, I am sure you get the gist.
[/QUOTE]

I have a Ph.D. in robotics, and us examiners have access to millions of published documents with a reasonably good search engine. Also, the E.P.O. offers us subscriptions to literally hundreds of scientific publications, which are computer-searchable.

Our databases are very good, in my opinion. I am quite happy with the amount of knowledge we have access to.

Regarding the “adding food flavouring to the pills”, well, that is where the experience and the know-how of the examiner enters the game :slight_smile: We read the patent application and, first, try to understand it by itself. Sometimes that is quite a chore, let me tell you! (check my comments in post #6).

In this hypothetical case, I have to see what the applicant presents as the “gist” of the invention, what makes it different from everything that has come before. My first task is then to check whether that particular difference has a technical effect.

In the case of the pills, adding food flavouring wouldn’t have any kind of “technical effect” (therapeutic effect in this case), and the patent would be rejected.

HOWEVER, it may happen that things that initially appear to have no technical effect actually do have one. In the “food flavouring” example, let’s imagine that the company manufactures compound X, and finds out that taking it with turmeric undoubtedly enhances the effect of X, or has some weird synergy with it that generates a completely different therapeutic effect. In this case, it would be acceptable to patent the addition of turmeric to the formula for the pills that contain X!

For this to be accepted, the applicant has to justify the addition of turmeric to X, for instance by citing scientific studies or publications in the patent that can be checked out. And, of course, we have to check that nobody else had thought before about adding turmeric to X! (That is what our huge databases of documentation are for).

As you can see, we have to use our specialist knowledge and our “instinct” (so to speak), in addition to what we can find in the prior art.

[QUOTE=johnpost]
have you ever seen applications in ECLA classes F03B17/04 or F03B17/00B?
[/QUOTE]

MEGALOL Ah, perpetuum mobile! XD XD XD
First of all, I must say that the fields I work with have nothing to do with that – I work mostly with G06F9/30s and /40s (basically: computer stuff).

For those who have no idea what we’re talking about: When you work with patents, you have a system to classify the technical field to which each patent belongs. The E.P.O. uses ECLA (a super-set of the International Classification System), and each combination of letters and numbers gives you what the patent is about. In our case, F03B17/04 and F03B17/00B happen to be codes reserved for patents about perpetual motion machines.

But it is a very funny story, actually :slight_smile: Years ago, the E.P.O. automatically (or almost) rejected patent applications about perpetual motion machines. However, it became evident that that was not a solution: Real believers would just make some trivial changes to their application and submit it again.

The E.P.O. realized that those guys, with their repeated applications, were costing the E.P.O. time and manpower (you must process every patent application that arrives, give it a class, and do a bunch of administrative things with it, even before it falls in the hands of an examiner). And no matter how many times you said “NO”, they refused to believe it!

So it was decided that, for the sake of both the E.P.O. and the applicants (sending a patent again and again costs a lot of money, after all!), it would finally accept those things, give them a class, and process them. If the “inventor” wants to have a patent about that, well, good for him! We limit ourselves to deciding if something is new and inventive. If it doesn’t work, that will be the problem of the inventor!

Besides, this decision has had a nice unintended consequence: Now, very often, it is possible for the E.P.O. to dismiss a newly arrived patent application for a perpetual motion machine because we can show that we already have an equivalent proposal in an old patent of ours! XD It has streamlined the process, I must say ^.^

Thanks for all your questions :slight_smile: Keep sending them!

14

JoseB: As a US patent examiner, it’s cool to hear how things are done by our European counterparts. I’ve only had a couple chances to speak with EPO examiners since starting at the USPTO about 3 years ago, but it’s always interesting to hear about how the same job gets done elsewhere.

As for a question: how are individual examiners rated as far as amount and timeliness of work completed? (The USPTO recently overhauled the docket management system here to change how an examiner is rated on the amount of time it takes to get work done, which has had me thinking about this lately.)

15

Hi there! Glad to meet a colleague :slight_smile:

Regarding your question, the system used right now at the E.P.O. (called “PAX” for some incomprehensible acronymic reason)* is rather straightforward.

In the E.P.O., each fully processed patent (meaning: A patent that has been finally granted or rejected) counts as 1 “point”. There are two benchmarks during the processing of a patent: “Search” (meaning, the generation of the search report) and “Final Action” (meaning, granting or definitive rejecting). Those are counted separately throughout the year (a particular examiner might carry out, say, 50 searches and 40 final actions in a given year).

Each “Search” is worth 0.6 points. Each “Final Action” is worth 0.4 points. A very simple calculation is done:

((# of Searches)*0.6 + (#of Final Actions)*0.4) / (# of Working Days in the Year)

The result is a number that is compared to a “benchmark”. If you are at or over the benchmark, good for you! Otherwise, you may end up in trouble.

Those benchmarks vary from directorate to directorate. Each directorate especializes in different technical fields, and the benchmarks are supposed to reflect that certain fields are harder than others: The “easy” fields have higher benchmarks than the “hard” fields.

That benchmark is supposed to reflect the “average examiner” in that directorate, and benchmarkes are decided from “on high”, supposedly taking into account the results of the previous year and the estimates of number of patents expected to be processed in the coming year. However, I tend to think that those benchmarks are basically random numbers that came into the heads of the “higher ups” (who, interestingly enough, tend to be people without experience in the patent business, having been appointed to their posts by politicians).

Hope this helps, IlPalazzo :slight_smile:

  • There is an amusing anecdote about the time when they were beginning to implement “PAX”. There were a number of meetings with personnel because many of us were very mistrustful of this new system. The “higher ups” were there telling us that PAX would be a wonderful thing, and much more beneficial to us than the old system. During one of those meetings, listening to the spiel of the guy there, some of us couldn’t help but comment on what he was saying… We began singing spontaneously: “All we are saying… Is give PAX a chance…!”
16

Interesting. That sounds a lot like the system we had until a few years ago, but with the proportions shifted slightly. For us, each case was worth one bonded disposal (BD) which consists of 2 counts. You’d get one when you mailed the first action on the merits of an application and another when the application was either allowed or abandoned by the applicant. The number of counts you needed in a biweek was determined by the number of hours you spent working (as opposed to interviewing with attorneys, attending staff meetings and the like) and the expected hours/BD for your technology and a multiplier based on your seniority and pay grade (with a more experienced examiner being expected to produce more). A couple years back, it was changed to 1.25 counts for a first action, 0.25 for a final rejection and 0.5 for a disposal (with the 0.25 for a rejection added to the disposal value for a case that wasn’t ever finally rejected) in an effort to incentivize more work on first actions.

Which reminds me; does the EPO have a significant backlog of applications or wait time for examination? If so, what’s being done about it. The USPTO has about 760,000 untouched applications waiting for examination and an average wait of almost 30 months (varying by technological division within the Office, of course) for a first action. It seems like every year, there’s some new big push to clear out more older applications and the agency’s current director is trying to get the wait down to 10 months, though I haven’t been paying much attention to how he plans to do it besides the yearly pushes.

Oh, and I love the “Give PAX a chance” story. Thanks so much for sharing that.

17

Ah, the backlog problem – We have a very big backlog. Not as big as the USPTO, but big nonetheless. I don’t have the exact numbers with me, though.

To deal with it, the E.P.O. has been doing a “cut the tail” action for a couple of years already. That means checking each month which applications are older than a certain amount of time, pass the list of dossier numbers to the examiners in the directorate, and prioritize those applications for processing. The idea is for every examiner to do at least one “ancient” application for each “new” application during the month. Of course, that doesn’t always happen… But we do what we can.

To help with this, each examiner can check in his computer how long each file assigned to him has been waiting for processing.

The higher-ups are hoping to achieve a 20-30% reduction in the backlog by the end of 2012. I don’t know if that will happen, because they also expect a nice increase in the number of new applications… :rolleyes:

(Right now I am re-starting work after spending 6 weeks extremely sick [bacterial pneumonia], and I have been looking with dismay at my in-box :stuck_out_tongue: Let’s hope I can deal with it reasonably fast!)

18

I’m sorry to hear about the pneumonia and glad you’re on the mend. The “cut the tail” slogan reminds me of last (fiscal) year’s campaign here. It was originally called WYTO, standing for “Work Your Tail Off”. Examiners didn’t respond well to it so they changed the name to COPA (“Clearing the Oldest Patent Applications”). I still don’t know who though “Work Your Tail Off” was a good idea.

19

… Good grief. What a fantastic example of pointy-haired bossitude.

Not that “Cut the Tail” is much better, though. It tends to inspire nasty associations in male examiners… :stuck_out_tongue:

I have to go to bed now, but tomorrow I hope to be able to relate the wonderful, wonderful story of Arthur Paul Pedrick and his patents (especially the “cat patent”). It is great.

20

I have a question for the OP and Lord Il Palazzo.

I applied for a patent. It was denied. I suspect that it was ultimately our fault, in that we didn’t really delineate for a non-radiologist the degree to which our device was dissimilar to another patent - the other patent with which we were being compared would not work in a CAT scanner for example, and there were several other distinctions, that we should have more clearly made.

Unfortunately, two of us were not in a position to move things forward, and the least tech-y one of us was.

Given this, is it worthwhile trying again?