Are educational requirements for the patent bar out of date?
3 comments
I researched a patent examiner who was examining the software (algorithm) patent I was managing and not to my surprise had a pure bio/life science background!!!
He dismissed all the claims quoting basic statutes that it was not novel and cannot be patented. So the patent attorneys had to rebut the office action and ultimately ended up costing more (almost twice).
I understand you cannot have experts for all the technology specialties. For Ex. Even if you masters in EE, there are so many different fields in EE. For instance, if I am a MSEE and I focussed on IC processing, I might know the intricacies ( and innovative elements) of MEMS processing or wireless communication algorithms.
Having said that, most (of late some) patents have elements of novelty in it. So I wish the examiners have the basic background in reviewing the patents. This would ultimately reduce patent cost IMHO.
End of my Thursday rant.
He dismissed all the claims quoting basic statutes that it was not novel and cannot be patented. So the patent attorneys had to rebut the office action and ultimately ended up costing more (almost twice).
I understand you cannot have experts for all the technology specialties. For Ex. Even if you masters in EE, there are so many different fields in EE. For instance, if I am a MSEE and I focussed on IC processing, I might know the intricacies ( and innovative elements) of MEMS processing or wireless communication algorithms.
Having said that, most (of late some) patents have elements of novelty in it. So I wish the examiners have the basic background in reviewing the patents. This would ultimately reduce patent cost IMHO.
End of my Thursday rant.
Nobody is qualified to judge algorithm novelty. There is just too much public information. It's as if there were a machine shop in every home, and millions blogged daily about their mechanical inventions.
yeah, this raises another issue - whether algorithms should be patented in the first place.
Right now, you typically need a degree in a physical science, biological science, or engineering to take the exam and become a patent agent.
Interestingly, Mathematics is specifically excluded as an acceptable background in the "non-acceptable coursework" section.
Now obviously I'm biased because I was a pure mathematics major, but it seems to me that this rule excludes a huge number of people who would be most capable of reviewing a massive new area of patents - namely, algorithms.
Technically, algorithms aren't patentable, which is probably why mathematics was excluded from the acceptable academic background list - Paul mentioned this when he wrote his "Are Software Patents Evil" essay...
"Unfortunately, patent law is inconsistent on this point. Patent law in most countries says that algorithms aren't patentable. This rule is left over from a time when "algorithm" meant something like the Sieve of Eratosthenes. In 1800, people could not see as readily as we can that a great many patents on mechanical objects were really patents on the algorithms they embodied..."
The patent bar has decided (for all practical purposes) that mathematics is patentable, but they continute to exclude people with a mathematics background.
I truly do not want to become a patent agent - but it does disturb me that the people who are licensed to "prosecute" (ie., file for) patents and/or "review" (ie., grant) patents on algorithms are specifically not supposed to have a math background.
Anyone care to comment or leave your thoughts on this?
(here's a link to the requirements doc: http://www.uspto.gov/web/offices/dcom/olia/oed/grb0403.pdf)