Attack: I don’t want to steal JoseB’s thread while he’s away, but I will say this: it’s very difficult to answer a question like this without more details about the case itself, including the specific content of the case as filed, the manner of rejection you received and how long ago you received it (as in, has the case gone abandoned and a new application would be needed or is it still open and could simply be amended). Were you working with a patent attorney or patent agent to file the application? If so, they’re probably the best ones to talk to about the application and how (and whether) to procede. If not, it would probably be a good idea to talk to one as they will know far more about the applicant’s side of the process than most examiners would.
Sorry if this is a bit vague, but I hope it helps.
To Attack: What Il Palazzo said. If your patent was denied, and you think that it was due to a lack of communication, the person best qualified to help you there is your patent attorney/agent.
Did you write the patent yourselves in-house? It is generally much better to have some professional patent agent write patents for you (well, if your company is big enough that it can afford its own patent department with patent attorneys, that’s perfect, of course).
Those guys are adept at navigating the legal details, and they have a lot of experience writing patents – they should be able to put into focus the really important details.
Also, Il Palazzo is exactly right: It is very hard to answer this kind of questions without having the whole information and all of the details in front of you. Better refrain from giving an opinion on the matter than risk leading you astray.
And now…
o/ o/ Hey-ho, hey-ho… It’s off to work we go… o/ o/
This is probably a stupid question but it is one that I have been curious about for a
long time. I think there is a rule that if two inventors submit a patent for the same
thing, the inventor who submitted his application first will be awarded the patent
(assuming that the invention is new, unique and deserves a patent). There was
the case of Alexander Bell and Elisha Gray both submitting a patent for the
telephone on the same day. Bell was rewarded the patent because his submission
was made before Gray’s.
If this is the case, could I get a patent for the wheel? The caveman who made
the first wheel never applied for the patent. If I go to the patent office with the
invention of the wheel, my application would then be first and I would be issued
a patent, right? This also assumes that no one else in history - for example, George
Stephenson or Henry Ford - has applied for the wheel patent.
Didn’t the examiner warn you of the weaknesses in your application before issuing a final decision? This is something only your patent lawyer can answer properly. If it was merely a failure to communicate there are ways to get the examiner to reconsider but those things have to happen on a schedule in a timely manner. This wasn’t discussed when you got the bad news?
Exactly. You couldn’t patent an old invention just because its the original inventor got it patented.
Firstly, as Acsenray rightly pointed out, the application would still need to be examined for novelty and obviousness and I’m certain any examiner in the world could find evidence (possibly while blindfolded) that the wheel predated your filing.
Second, there is a requirement (in the US, at least; I assume other jurisdictions have similar rules in place) that you be the actual inventor of the invention you’re patenting. Again, there would be no difficulty proving this wasn’t the case with somebody trying to patent the wheel.
Yes, thanks, Lord. I remembered too late about that part of it.
Incidentally, until recently, U.S. law was significantly different from European patent law in that the right to secure a patent belonged to the person who was the “first to invent.” That meant that even if Bell was the first to apply for the patent, if Gray could have proven that he was actually the first to come up with the invention, then the patent would go to Gray.
Under the Leahy-Smith America Invents Act of 2010, the law has been changed to “first inventor to file,” so if both Gray and Bell are legitimate inventors, then the first to submit an application gets the patent.
How are patents distributed in terms of subject matter? E.g. are you generally only responsible for patents that cover fields you are familiar with?
How often do you have to call in outside subject matter experts for a patent that involves an obscure field and/or obscure technology? E.g. someone is trying to patent an “Artificial Spleen Mark I” and you decide you need to ask a doctor if they thought it would actually fulfill the fundamental tasks of the human spleen, or someone tries to patent an underwater laser light show apparatus and you don’t know whether or not laser light is visible underwater and call a physics professor.
Does the patent office ever try to build or hire someone to build the thing that the patent purports to describe? E.g. to find out whether or not it actually works or can reasonably be built in the first place.
In the U.S., examiners are assigned to technology groups and they are given applications relevant only to those groups. I might be wrong about this, but I have never heard of the P.T.O. calling in an outside expert. The P.T.O. as a whole is supposed to be sufficiently expert to handle all applications.
Correct. In the USPTO, there are a number of “Technology Centers” listed here, from the USPTO web page:
Each TC is broken down into art units, each of which handles some specific subset of the technology. For example, I work in art unit 3784, within TC 3700, which deals with refrigeration, heat exchange and automatic temperature and humidity control. Any case dealing with that technology will be classified and examined in 3784 (this is a bit of an over simplification, as 3784 is a little bit of a special case, but it work for explaining the system.)
I’m not sure what system they have in the EPO, but I imagine it’s similar. JoseB would certainly know better than I.
I’ve never heard of the USPTO calling in outside help either. With over 6000 examiners, there’s generally someone who has at least a working knowledge of any technology you can come up with.
Never that I’ve heard of. If there were some question about whether the invention of an application was actually possible, the onus would be on the applicant to provide documentation. I don’t know of the Office ever requiring working models anymore though it used to be the norm (though I’ve had a few applicant’s provide demonstrations voluntarily.)
Incidentally, the term of art for obviousness findings is “prior art.” If the examiner finds prior art that practices your purported invention then you can’t get a patent. In the case of the wheel, the examiner doesn’t have to look very hard to find prior art.
I feel a little bad for answering all these questions, but JoseB hasn’t been by in a while so I guess I might as well.
To clarify, any earlier patents or other publications that date from before the application filing and are considered in examination are called prior art, not just those used obviousness filings.
In the USPTO, an examiner’s salary is determined using this pay table. Most examiners start at either GS 7 or GS 9, depending on various factors (such as previous experience and education and GPA for recent grads) putting the starting salary between $51,988.00 and $78,881.00. The most senior examiners can ultimately reach a salary of $155,500, though that takes years and involves jumping though various hoops to become certified to work at that level.
This of course only applies to the USPTO. I can’t speak for the EPO.
Just to correct a mistake I made in the above post, since I’m outside the edit window by a few hours:
Any earlier patents or other publications that date from before the application filing and are considered in examination are called prior art, not just those used obviousness findings.
