I have no quarrel with the examiners in the Patent Office or the many others who work on processing patents and trademarks. I have found them to be courteous, inquisitive, and understanding when dealing with the many aspects of intelectual properties. They are bound by a complicated set of rules which fortunately for all of us is published and often revised to aid in understanding the entire process of patent law. (The Manual of Patent Examining Procedure spells out the process in exquisite detail, complete with examples and is for sale by the U. S. Government Printing office.)
Problems for the most part in dealing with the examiners are not knowing the process as well as they do and not understanding the nuances of the language they speak. These are a couple of the main reasons for seeking assistance of an attorney or agent in dealing with the Office.
The Patent Office itself is a self perpetuating governmental agency that has become hide-bound in its view of the rapidly changing world of technology. It is impossible for an examiner to become "the" world authority in no matter how narrow a field. And in today's litigious society you can be sure that most contoversies will appear before a judge and jury. So what is the answer?
1) THE PATENT OFFICE HAS OVERREACHED ITS MISSION AS ORIGINALLY INTENDED Now the purpose appears to be to featherbed and provide more, not less roadblocks to the inventor. Let me illustrate: Inventions that are successfully passed through the maze of examiners, almost never do so on the first submission. Rather, it takes first and second rejections and usually a final rejection before the examiner is satisfied. What has been accomplished by this archaic form of examination? Nothing! Because the final arbitrator is not the U.S. Patent Office but the U. S. Court system. Let's say you are awarded a patent in an area where there is potential competition, and the competition (of course) is unhappy that you have been given exclusive rights for some 14 or more years to practice your invention. Their lawyers, scientist, executives, librarians, investigators, etc., will immediately strive to find a way of voiding your patent. Their approach will be to either show that your claims are too broad exceeding the teachings of your specifications or if luck will have it they will be pleased to discover that the examiner in restricting your claims has rendered your patent useless. They may take their findings to court and a judge and perhaps a jury to judge the merits of your patent. Since it is unlikely that the judge and/or jury has expertise in the area of your technology, they will be more likely swayed by the presentation of the lawyers and their expert witnesses rather than the Patent Office personnel.
Bottom line: The Patent Office has wasted you time and money in forcing you to present your invention in their structured manner, giving up some of your claimed benefits/methodology, and in the end the courts, not the patent office is the final arbitrator.
2) THE PATENT OFFICE SHOULD SIMPLY ACCEPT AN APPLICATION AS WRITTEN This appears to be the purpose of the provisional-patent application. This is discribed as a cheaper, simpler way for inventors to get a foot in the door on the patenting process. It has been in effect since June 1996. The most value for this approach is in academia where publish or perish is the rule and if some work is described in the literature prior to filing the application, patent protection can be lost. On the other hand, cost for obtaining a patent using this approach will be greater since there are additional filing fees and attorney fees. And most significant, designs must be specific and if changes are deemed necessary, the best approach is to abandon the application and start anew.
If instead the Patent Office would simply accept an application as written, issue a patent certificate and get the hell out of the way, the inventor can get on with the business of marketing the invention. What's wrong with this approach? First, it will put a lot of Patent Office people out of work. Second, it will open the door to inventors that are troubled by the cost, time and difficulty in pursuing a patent. Third, it will speed up the process (unlike the provisional patent which is just another hoop to jump through). Fourth, it will recognize that the world has changed, litigation is a way of life and the U. S. Government has no place in this changed environment. And Fifth, it will move to conformity with the international community, placing it more in line with the Japanese and European Patent Offices.
3. THE PATENT OFFICE SHOULD ISSUE AN INVENTION CERTIFICATE WHICH IS NOTHING MORE THAN RECOGNITION THAT YOU HAVE AN INVENTION AND STOP ISSUING PATENTS This will stimulate the ecconomy by opening the door to more citizens and their inventions. And, would be at lower cost to the applicant and the Government.
Interesting enough, the Patent Office has just this mechanism in place already! Design patents essentially say, "OK, you submitted the drawings, and a simple claim. Here's your patent". What could be more simple?
More than 90 percent of design applications issue and at greatly reduced cost to the inventor. Most experts in the field will tell you that design patents are useless, can't be enforced. Well neither can most other patents unless you have deep pockets. Oh yes, someone will point out how Craftsman violated the patent of an inventor in Tennessee with the quick release socket wrench and had to pay millions. Okay, any others?
4. LET THE INVENTOR (OR HIS AGENT/ATTORNEY) WRITE AS MANY CLAIMS AS THEY LIKE Let them describe the invention in their own words with the claims stating what the inventor believes to be uniquely different that sets his invention apart from the field. If he screws up and doesn't find some key bit of past art, tough. If he overreaches when he claims more than his specifications allow, that's a problem for him/her and their agents to work out. And, if it appears that the inventor has tried to claim the sun and the moon and everything in between, the competition and the courts will certainly hasten to prove the error.
5. STOP TRYING TO BE LEADING EXPERTS IN THE FIELD Technology is just too complicated for an individual to be all-knowing. While the examiners have tried mightly to stay up to date in the many fields, they simply can't. This has shifted the power to large corporations both domestic and international that can afford to have and hold the expertise. It's no wonder that the major corporations backed the Moorhead bill. It tilted the playing field even more in their favor.
6. PATENTS ARE FOR THE MOST PART USELESS. The vast majority of patents granted are never reduced to practice. Why, because you need marketing, distribution, production, and a myrad of other functions before you can bring a product (or an improvement) to market. Having said this, we will always have dreamers that believe that their invention will be just what the public wants and is willing to pay for it. But, the small inventor is afraid someone will steal his/her idea. By granting an easily obtainable patent, now we shift the burden. The inventor has his certificate which says, "Yes, you have an invention". Now, go about the business of trying to capitalize on your idea. Let the market be the decision maker.
Let's reform the Patent Office and make it a register of inventions rather than an issuer of patents. Let's make sure the small inventor has a place in the global economy. Let's lessen, not strengthen the bureaucracy of the U.S. Patent office. And, finally, let's find a way to simplify the system and make it work as it was intended.
The Commissioner of the Patent and Trademark Office, in hearings before Congress this past year, spoke in favor of a corporation style, performance based organization within the Commerce Department. Among the provisions for a new organization would be publishing within 18 months, from the filing date, the approved patent. Speeding up the patent process sounds like a good idea. And, performance based, sounds good but is this a catchy way of saying, we will raise prices, (like the post office?).
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Nowhere is it clearer that the Patent Office has muddied the water than in an upcoming case before the Supreme Court where they will decide on the Doctrine of Equivalents. At issue is how much must you change a process before it is in itself patentable. Imagine that I am producing a product at let's say 50 to 70 degrees and my patent clearly says that I can operate in this range. Now another company in studying my process notes that while I claimed just that as shown in my specifications, it is likely that the process would be possible at 70 to 90 degrees and in fact may work better. They file and obtain a patent for the process between 70 and 90 degrees. Woe is me, I can't run my process between 70 and 90 degrees without infringing the new patent. I got caught up in The 1952 Patent Act which required applicants to define their inventions with great precision, and now the system is working against me because the examiner insisted that since my examples cited in the specifications did not include a temperature above 70 degrees, I could not claim that range in my patent (of course, and the Patent Office likes this approach - I could have filed another application which extends the range of my original claims - at additional cost to me).
Now put the shoe on the other foot, the so called Doctrine of Equivalents, means that the other company can't patent the process just outside the range of my claims regardless of whether the process works better as they have found. And yet, the Patent Office would have granted me the identical additional patent, extending protection for my invention!
Isn't this a fine kettle of fish? See why I believe that the Patent Office should get out of the business of restricting applications. Let the inventor make the decision of what they want to claim and leave it to the courts to decide the issues.
ABOUT Joe Wortham