The examiners are not asleep

The examiners are not asleep

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26 February 06.

I just want to clarify a little something, to defend the honor of the patent examiner.

The standard article on patents goes like this: author posts a note about a patent that looks idiotic, perhaps chiding the system. If the article is online, commenters, often several, go through the trouble of posting something in the way of `that's idiotic! Those patent examiners must be asleep!'

Look, it's not the examiners: it's the judges and administrators. A long series of rulings have dictated that the patent examiner can only reject a patent for certain very specific reasons.

Let's start at the top: the Court of Appeals for the Federal Circuit (CAFC) is a court for administrative issues on the federal level, and is effectively the highest court in the land for patent issues. I mean, if you were a Supreme Court justice deciding between hearing a death penalty case and a patent case, which would you pick? So the CAFC is left as the final say in how patent law is interpreted. Here are excerpts from the résumés of three of the CAFC's members:

Pauline Newman:

Worked for the FMC Corp. from 1954-84 as patent attorney and house counsel and, since 1969, as director of the Patent, Trademark, and Licensing Department
Member of Council of the Patent, Trademark and Copyright Section of the American Bar Association, 1982-84
Board of directors of the American Patent Law Association, 1981-84
Board of governors of the New York Patent Law Association, 1970-74
President of the Pacific Industrial Property Association, 1978-80
Executive committee of the International Patent and Trademark Association, 1982-84
Appointed to CAFC, 1984

Alan D. Lourie:

SmithKline Beecham Corporation, (Patent Agent, 1964-70; assistant director, Corporate Patents, 1970-76; director, Corporate Patents, 1976-77; vice president, Corporate Patents and Trademarks and Associate General Counsel, 1977-90)
Treasurer of the Association of Corporate Patent Counsel (1987-89)
President of the Philadelphia Patent Law Association (1984-85)
Member of the board of directors of the American Intellectual Property Law Association (1982-85)
Member of the U.S. delegation to the Diplomatic Conference on the Revision of the Paris Convention for the Protection of Industrial Property, October-November 1982, March 1984
Chairman of the Patent Committee of the Law Section of the Pharmaceutical Manufacturers Association (1980-85)
Appointed to CAFC, 1990

Richard Linn:

Private practice, specializing in intellectual property litigation 1970-99
Member, founding Board of Governors, Virginia State Bar Section on Patent, Trademark and Copyright Law, Chairman, 1975
Appointed to CAFC, 1999

With that kind of background, it is no surprise that the system is designed to make life easy for the patent attorney. It's not an insider conspiracy, but if you've done nothing but patents for the last thirty years, your worldview may be a little patent-centric.

The attitude embodied in decisions by the CAFC and the directorship of the USPTO, as discussed below, is that every applicant is entitled to a patent, and it's just a question of the eventual breadth of the final product and your level of persistence.

Tying the hands of the examiner

First, the concept of obviousness is out the window. Either a design is in the literature (or at least a "suggestion" of it) or it ain't. If it is not in the literature, then the examiner can not reject. Now, if you read the law as written by Congress, then there's something about how, if a person having ordinary skill in the art (a PHOSITA) would find the application to be obvious, then the examiner may not accept the application. However, the CAFC has taken pains to clarify that we mean a person having ordinary skill in the art and a lobotomy. The Supreme Court may soon weigh in on this one and overturn the CAFC.

Being a regular reader of intellectual property blogs, and one with an abiding interest in the software patent question, I regularly get to witness the disdain for the PHOSITA among patent attorneys. I will be polite and not link, but there are more than enough posts about the ignorant Slashdot crowd who don't understand the requirements for obviousness, and how asking them for prior art is equivalent to "mob rule." But, y'know, Slashdot.org is the mecca for the computing PHOSITA. I could not imagine clearer indication that a patent is obvious to a PHOSITA than that patent getting ripped apart on Slashdot. Yet, when this happens, many patenting insiders shake their heads at the ignorance of the heathens, rather than questioning whether the existing rules describing what the PHOSITA is capable of and the reality of what real-world PHOSITAs do are drifting apart.

The second problem, unrelated to the first, is that the idea that some things are patentable and some are not is also out the window. This is not about software: anything they taught you in school about how some subjects are patentable and some are not has been eliminated by the CAFC. If you would like a monopoly on any type of human activity, then there is a way to word your application so the examiner can not reject it.

The case of Mr. Carl Lundgren stands out. He applied for a patent is for a payment scheme, and an examiner rejected it as just not what patents were designed for. But the Patent and Trademark Office's Board of Appeals reversed the examiner's attempt to reject a patent: "Our determination is that there is currently no judicially recognized separate `technological arts' test to determine patent eligible subject matter [...]. We decline to create one."

Which is why the honor of the poor patent examiner has been sullied by those who write the rules. When you see a patent for a new word or a furniture arrangement or whatever idiocy Thomas Jefferson clearly did not have in mind when he wrote the "inventions patentable" law, bear in mind that the examiner may have wanted the patent thrown out. But the CAFC and the Director of the USPTO have ruled that the examiner has no such ability. We have returned to the very early days of the Patent Office, back in the early 1800s, when the Patent Office was simply a registrar for the wishes of businesses who wish to claim a monopoly.

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on Saturday, June 2nd, Appalled said

I agree that Carl Lundgren stands out. Mr. Lundgren is employed by the U.S. Department of Labor, and spends his days and our tax money (to the tune of his six-figure income and generous bonuses) doing very little other than working on his patents and running his private business, RelProMax, using the Department of Labor�s telephones, computers, copy machines, and clerical support. It�s no wonder he has all day to appeal his bogus patents.