SOJOURNPOSSE: THE REVIEW - THE ART OF PATENT EXAMINING

It's patently obvious: The art of patent examining
Words by IP Freely*

The challenge in patent examining is in determining not just the novelty, but also the ‘obviousness’ of an application. Has it been done before? What problem is the invention solving? Can any Tom, Dick or Harry think it up himself without any creativity? IP Freely explains the ‘philosophical tool’ employed in distinguishing the crap from the creative.

A patent is a negative right. A granted patent stops other people from making, using, selling, or distributing the patented invention for (usually) 20 years.

But, in order to win these rights, the patentee must submit the application for examination. The application must: 1) disclose the invention; 2) fulfill certain strict criteria that include requirements of novelty and inventive step.

Not everything is patentable. Treatment of human or animals (medical) is not patentable. A business method isn't (in Europe). A computer program that has no effect on the physical world isn't. A discovery isn't. A natural phenomenon isn't. Certain biological processes that involve life are not patentable, and certain inventions that are "against public morality" aren't.

To fulfill the requirements of novelty, the product must be new: is this product or method known already? In some technical fields (such as mechanics) the question is relatively straightforward.

For chemists, the question is harder because a huge number of molecules are often described in patents by using variables or lists of variables. The argument on whether something is disclosed, or not, is not always an easy one. If the patentee is claiming a new molecule, then the molecule has to have an effect, i.e. solve a problem.

Determining whether something is obvious or not is a bit trickier than determining novelty. There are certain "tools" or approaches that are used to determine obviousness. The most commonly used one and one used in the EPO is the problem-solution approach.

Patentees will try to bullshit their way to inventiveness by saying something has certain properties that can only be measured by gobbeldygook parameters no one's ever heard of. Patentees often lie.

The first step in determining an inventive step is to find out what has been done before that is most like the invention of the application (read: closest prior art).

There are usually two answers: Either it does the same thing, so it's an alternative, or it does the same thing, only better, so it's an improvement.

Rarely is something so new and inventive that no real comparison can be found, and such applications are real treasures.

Is the solution to this problem that is provided by the application obvious without the benefit of hindsight, i.e., if we don't already know answer.

To answer the question, the examiner must become "the skilled person". The skilled person has no inventive or imaginative thought in her/his brain, but knows almost everything there is to know about the technical field of the application.

Of course, the "skilled person" doesn't exist in reality (although I have met some very dull examiners who naturally do a good impression). It's a philosophical tool to approach whether the subject matter of an application is inventive (i.e. not obvious) or not. The examiner pretends to be this imaginary person and ask whether, without an imaginative or creative thought, s/he would arrive at the same solution as the applicant. The examiner may for example combine the teachings of previously known documents to arrive at the same solution as the applicant. In which case, the solution of the application isn't inventive.

An applicant claims a heat-proof tea coaster made out of a certain kind of plastic, let's call it Plastic A, to stop lovely veneer tables being damaged when cups of tea are placed on them (yes, you can see they'll simply make millions from this splendid idea). There is no evidence that tea coasters have ever been made out of Plastic A before, so the examiner acknowledges that the claim is new.

On searching for further for tea coasters, the examiner has found in a home furnishings catalogue, lets call it document D1, that there are some decorative tea coasters made from natural rubber in the shape of a snail, ummm nice! He has also found an academic paper, let's call it document D2, that compares the insulating properties of certain plastic materials. The study reveals Plastic A and natural rubber have similar thermal insulating abilities. In other words, Plastic A and natural rubber are equivalent, as they have equivalent properties in the role for which they are being used.

Using D1 as the starting point — the closest prior art — the problem to be solved would be to provide an alternative tea coaster to the one made out of rubber. The solution of the applican t— a tea coaster of Plastic A, which has similar thermal properties to that of rubber — would be obvious. Thus, the teachings of documents D1 and D2 have been combined to show that the claim is not inventive.

In the trivial case above, the applicant has disclosed the “invention” for nothing. But the world will probably survive without tea coasters made of Plastic A.

However, if the invention isn't obvious, the applicant is granted a patent and will have a monopoly on the invention for up to 20 years provided that the renewal fees are paid.

It is in the applicant's interest to have the most protection possible. So it's no surprise that the applicant will try to claim far more protection than is justified.

An applicant finds that adding primrose essential oil to a plastic sheet has the unexpected effect that the plastic sheet doesn't go mouldy under damp conditions.

The applicants first claim might be “A method of preventing mould on a material by adding an essential oil.” Such a claim is unjustifiably broad and it is the examiner's job to restrict the scope of the claims to what the application merits.

The second claim might be “A method of preventing mould on a plastic sheet by adding primrose oil”, which would be much more reasonable.

The ensuing correspondence may become a battle of wits between the patent attorney, who will try every argument to justify the broad claims, and the examiner, who has to represent the interests of society and restrict the application to that which is fair.

Although patent fees can cost about the price of a new Mercedes, most of the money involved is spent on lawyer's fees.

The European Patent Office is a non-profit organisation. It is not funded by taxes but is self funding. It takes revenues from, for example, the search fees, and from maintenance fees that are paid once a patent is granted. Patent offices actually lose money on searches (it costs more to carry out a search than the search fee covers) but gain money by granting patents. However, fewer and fewer patents are being granted relative to the number of applications that are coming in, more and more applicants are refusing to renew patent fees so that effectively the patent goes “dead” earlier.

No patent office is immune from the current economic crisis. The Danish patent office, which is relatively small, has recently got rid of 35 examiners.

The search involves using a computer to look to see if the invention of the patent application already exists, or if something similar has been done. Examiners use a combination of powerful tools (including a powerful searching language) to look for relevant patents and journal articles. And of course, they can use Google.

Once a patent has been submitted, it forms the huge body that makes up the prior art. However, if the patent is to be found again, it has to be classified by subject matter. Classification takes a huge amount of time, but is essential if examiners are to find the right documents that are relevant to a patent application while avoiding noisy results or missing important information. More information on classification can be found on the The European Patent Office's website.

In the olden days before computers, paper files were classified by theme and then put into physical drawers based on the file's classification. The same principle is still used, except the drawers are now virtual. To carry out a patent search, people used to take out all the patents in a drawer and skim through them by hand. With the explosion of patent applications in the last 12 years, drawer searching would no longer be possible. The skimming now is helped by a viewing tool that highlights relevant keywords.

Drafting a patent is a very skilled art; a badly drafted patent will lead to a refusal or will limit severely the scope of the protected subject matter. A poor patent can lead to a loss of money for the company and may mean that a competitor can exploit the loopholes within the patent to make a similar product without paying the original inventing company any royalties. Therefore, companies pay patent lawyers, who charge an arm and a leg, to make the most out of an invention. Furthermore, companies also pay lawyers to try to find arguments against a granted patent to have that particular patent revoked.

Unsurprisingly, most of the costs incurred when obtaining a patent go on lawyer fees.

The patent system rewards technological progression by offering an exclusive right on the commercial exploitation of a particular invention for up to 20 years. However, getting a granted patent is difficult. And so it should be.

IP Freely illuminates the blogosphere with opinions on patents. Among other things.