Note: This is the second in a series of posts about my interview with a former Patent Examiner, who worked for the USPTO from 2000-2008. Read Part I here.
In the first part of the series, the focus was on questions 1, 2, 4, and 5 which dealt mostly with the whole process of what happens to a patent application when it arrives in it’s cute little envelope at the USPTO, how the examiners are organized into
coffee clatches groups, how the chain of command works, that sort of thing. Now it’s time to put your waders on for a deeper dive into the topics of Prior Art and examiner skill set, including salary information direct from the horse’s mouth. The horse, of course, being the publicly available government website that lists salary information. <— Answer to Question 9? Done and done.
The topic of most interest to me was that of prior art and the question I posed was this:
3. What tools do you use to search for prior art? Is a prior art search even really a major part of a patent application review, or is that expected to have taken place before the inventor files?
The answer provides a lot of insight into how those problem patents that the trolls exploit came into existence to begin with.
In answer to the first part of the question, my patent examiner said this, and I quote here just to make his answer stand out, it is not a verbatim direct quote but rather my piecing together of notes of the conversation, emphasis mine:
While I was employed at the USPTO, there were two search systems, called East and West. Examiners would choose which one they wanted to use. These systems searched only the patent database. Now days, most examiners use Google Patent Search, but again that searches only the universe of existing patents.
Prior art search then is 99% patent literature. So that is a huge lesson learned after leaving…technical manuals and publications need to be searched too.
Did you catch the bolded part?
He did add that there is a “USPTO Library” of sorts where you can put in a request to have more searches done, outside the scope of existing patent literature. But that can take up to two weeks and is often done by people who are not well-versed in the area. Meaning, they are not experts in the subject matter like the examiners in a particular Art Unit are. Often the results that you’ve waited a few weeks for, potentially dinging you on your on-time deliverable metrics, are not worth it.
And speaking of those metrics again, this was interesting to note, again, not a verbatim quote:
One thing that is nice about only searching patent literature using existing systems is that the results are standardized. It is very easy then for the Primary Examiner or Supervisory Primary Examiner to review work done by less experienced examiners.
Convenience outweighs knowledge in this case: the USPTO would rather have the results be uniform than thorough. My paraphrasing, he didn’t actually say that. That’s what our tax dollars are paying for, right? Right. I guess?
With regard to the second part of the question about how much prior art search work is done before the application is sent in, there’s a little bit of politico going on there as well. The lawyers who submit these applications on behalf of their clients know that if they do a prior art search that is thorough and they find something, there goes the application (and the associated client fees). BUT, if they do only a cursory “good faith” review so that they can say they did it without being called liars, then the application has the possibility of getting approved because you can betcha dern tootin’ those attorneys know that the USPTO’s prior art search is really a prior patent search and won’t turn up much.
And we wonder why the patent system is in disarray.
The conclusion that my examiner came to was that finding prior art is not difficult. But what is difficult once a patent has been issued, is taking that prior art to the patent office and getting it to be reviewed to invalidate a patent. Which tells me that the prior art searching before the patent is even issued is where the USPTO needs to step up it’s game.
Let’s circle back to the lawyers here for just a second, because it helps answer my Questions 7 and 8, which were as follows:
7. What would you change about the USPTO as it pertains to the number of examiners and their skill set?
8. Would more funding solve any of the problems that you now see at the USPTO
What my examiner said was this (my compilation from my notes once again):
Being on the outside now, when I have interviews with examiners I see that there is an intellectual drop off. They are smart engineering-type people but are not as well-spoken or persuasive as the lawyers arguing on behalf of the application. It would level the playing field to have examiners be lawyers.
To directly answer Question 8, he said that more funding to pay a higher salary to examiners with law degrees might help in the quest for better patent quality. They’d be able to speak the foreign language that is “lawyer”and therefore be less susceptible to the high-pressure tactics that patent lawyers sometimes use to push an application through.
They’d also be more aware, and this is my own personal perspective, of the prior art search capabilities that exist in the world outside the USPTO bubble. Look, it’s no secret that working for a government agency leads to tunnel vision. If you put some financial incentives in place for all those EE/JDs out there to transfer in from their God-awful 5th year “not-partner-material” Big Law position as a patent examiner, you might get someone with some real smarts behind the wheel of the patent issuing machine. Someone get Above the Law on the phone, I think I just solved their problem of so many disgruntled attorneys writing in to bellyache. You’re welcome.
Questions 7 and 8? Now also done and done.
I found this part of our conversation the most enlightening, because it really does speak to the lowest common denominator which is bad patents. Now, I will always contend that patent trolls will take patents and use them as a stick to beat people with no matter how good or bad any one patent is, because they get their kicks going thug on the little guy; they’re going to extort higher fees than necessary using those patents and do it from people who aren’t even infringing but can’t fight the charges. So don’t think for one second that I’m going soft on what the trolls’ business model really is.
But because there are so many patents out there that should never have been issued to begin with, it makes absolute sense to take a look at how that happened and what potential preventative solutions are out there.
In the final installment, we’ll tackle the subject of software patents. There are those who would contend that they are not a problem at all (Gene Quinn, I’m looking at you), but many would disagree. In Part III, we’ll let my former patent examiner weigh in!