Intellectual Property Law

She Lit a Candle and Showed Me the WayPatent Prospector

Patent examiners act as gatekeepers between inventors and the pearly entrance to patent glory. With the patent office hell-bent on rejection, achieving salvation can come down to knowing thy gatekeeper. Enter USPTO Examiners, a spanking new website, offering deliverance while boasting "We Examine the Examiners."

From the site:

USPTO Examiners is a website designed for professionals to review, rank, and learn about a Patent Examiner or a Trademark Examining Attorney who works at the United States Patent and Trademark Office.

This website has been developed to form an online collaborative process in which members of professional organizations, corporations, and inventors may pool their experiences and opinions about a Patent Examiner or a Trademark Examining Attorney, including their knowledge of the law and technology, as well as their accessibility. Prior knowledge about a particular Patent Examiner or a Trademark Examining Attorney can be a valuable tool when planning and strategizing the prosecution of a patent or a trademark case. This information can result in saving clients and inventors a substantial amount of time and money during the course of prosecuting a patent or a trademark.

Notwithstanding the crazy quote from some old coot named Jefferson about combining ideas as a patentable invention, the site is sparse. In addition to the above copied "about us" section, the website includes a jobless job-board, a breaking news section, what appears to be a comprehensive list of PTO examiners, law firms, and law schools, and most interestingly, a forum for posting reviews about examiners.

While undoubtedly an interesting idea, this concept requires careful consideration before the rain of praise. Since the site just recently launched, the low number of examiner reviews, which currently is only a handful, will be excused. But this does raise the question, will this rating system catch on? The value of such a system unarguably lies in volume, since a database of seven examiners is obviously not worth checking.

Additionally, site design is poor, with difficult-to-navigate postings. The site probably won't scale well: as the number of postings increase, it may easily become unmanageable.

The big enchilada: does any of this improve the patent process? The initial reaction of prosecutors to this site will predictably be excitement. By knowing the gatekeeper, prosecutors can anticipate what type of fight they are in for. Claims can be amended in accordance with examiner "difficulty". Applicants can opt for appeal without ever putting in the effort to fully fight a tight-assed examiner who is known to say "no admittance". Reasonable examiners attempting to perform a public service can be exploited for every patent they are worth.

Sounds good? But that is not the way the process is designed to work. There needs to be a certain amount of separation between examiner and attorney. Although there is a definite problem with the current examiner core, to assume that a poorly reviewed examiner will always examine poorly, or that a well reviewed examiner will always bring his A-game, adds an undesirable element of bias to the patent process. The goal is to achieve consistent examination across the patent office, and while this goal may be unachievable it is still worthy. Bias defeats this goal.

What happens when cases go to appeal? Will attorneys be permitted to present examiner reviews as evidence to overturn a rejection? Unlikely.

With an increase in participation, USPTOExaminers.com could benefit a patent prosecutor, but whether it rises to heaven or sinks into hell remains to be seen.

Full post as published by IP Law Daily on March 27, 2008 (boomark / email).