Patent Law

Amateur Hour

By Gary Odom and Jordan Kuhn

WikiPatents and the USPTO-condoned Peer to Patent projects are attempts at solutions looking for a problem. The implicit conjecture is that patent examiners are limited in their search capabilities, and a helping hand is just what they need. Nothing could be further from the truth. By fostering the impression that examiners need such help, a fake Band-Aid is applied in the wrong place. The wound is PTO management.

Jordan Kuhn, erstwhile patent examiner, now with Patent Hawk:

To imply that a WikiPatents or Peer to Patent reviewer can perform a better prior art search than a well trained, intelligent examiner, who is given enough time to do his job, is absurd. No matter how knowledgeable someone is in a particular field, they will have limited success prior art searching if they are inexperienced. To the untrained eye, claims are misconstrued and a thorough well-thought-out search based on accurate and informed claim construction will not occur.

One of the most common flaws for amateur searchers is wrongly reading the specification into the claims. Admittedly, this is also a common problem in litigation, but there, such misconstruction may serve one side or the other, and so is at least sometimes intentional. Patent examiners are trained to avoid this misstep.

The tools are there.

Examiners have access to excellent databases, and no matter how much examiners whine about having to work voluntary overtime due to unrealistic production requirements, the truth is that most examiners have more than sufficient time for a respectable search. Examiners run in to time constraints when they fail to realize the importance of quality. Examiners write shoddy rejections, in order to save time initially, which leads to extra work in the long run when the applicant replies.

The examiner production credits system encourages false productivity, by skewing to output irrespective of quality. An examiner can actually gain credit through lousy examination.

Then there's personnel placement misallocation: square peg to fill a round hole.

Additionally, a further problem that plagues the examination corps is art unit placement. Upon hiring, examiners are asked what technology areas they are interested in, yet most examiners get thrust into a technology area where they have little knowledge or experience. Granted, electrical engineers are placed into electrical art units, while mechanical engineers are placed into mechanical art units, etc. But electrical engineering is widely encompassing, and an examiner who knows everything there is to know about communication networks might not know the first thing about image processing. This misplacement, coupled with the fact that many examiners leave the office in under two years so that they never gain sufficient knowledge in their technology area, leads to examination that takes way longer than it should.

The emphasis on numbers by PTO management that convey an illusion of quality production, at the expense of actual examination on the merits, is the root of the problem.

The quality problem that infects the PTO needs solution, but allowing amateur prior art searchers to critique and comment on PTO examination is not it. This is a problem that must be solved from the inside out. The system is already in place to train competent examiners, so instead of masking challenges by trying to solve problems that don't exist, management restructuring coupled with a tweaked examiner placement and training program is needed.

Full post as published by The Patent Prospector on March 23, 2008 (boomark / email).