For those of you interested in spending a good Sunday pondering what the training program of a typical US examiner looks like, here’s a wonderful blog
that is interestingly titled “Patently Academic: The Saga of a Patent Examiner in the Patent Training Academy”
. For a delicious sampler, see below:
“Anyway, back to search strategies. I’m pretty impressed by the wide array of search tools available to examiners now, and somewhat amazed about how difficult things must’ve been even a few years ago. In addition to EAST and WEST, we have access to a large number of non-patent literature databases as well as “special search help” as available. There are quite a few options for beginning a search.
We got lots of helpful hints for refining our searches and making them more targeted. But we haven’t yet gotten guidance on how to end the search when it isn’t fruitful. At some point, you just have to say “Gee, guess nothing does teach these claims, or motivate combination.” And lets be honest here… one has to be mindful of production. You have to know when enough is enough. At the same time, you should know your freakin’ art.
A lot of questions people seem to be having would be eliminated if they thought for a moment about what searching really means. It means that the invention you are examining didn’t come from God’s lips to the inventor’s ear, most likely. Inventions are almost always combinations of old things put together. That’s the nature of invention. New uses for old things. But that invention fits within a category, a class, and it should be a class with which you have some familiarity. That familiarity, along with the classification listing, along with broader searching techniques, ought to be able to guide you to some narrow sets of possible art that will spur you on to finding better art. It should give you a sense of whether or not the invention is brand spankin’ new or just kinda new. No, those aren’t legal terms.”
What struck me in the above paragraph was the statement “Inventions are almost always combinations of old things put together. That’s the nature of invention.” Interesting indeed!! What about “chemical inventions”? Are new chemical entities “combinations”? See this excerpt from a note titled “Chemical obviousness in a State of Flux” from noted patent expert and ex–Director of GW’s IP Program, Hal Wegner
“The question must always be raised whether there is any direct holding in a Supreme Court decision that relates to chemical obviousness issues, particularly where case law at the Court deals with the obviousness of a combination of old elements; this is in contrast to organic chemistry entities, new structures, totally unlike the invariable combination of old elements of all modern Supreme Court obviousness decisions.
Because the case law at the Supreme Court has focused upon combination patents, there is an assumption made in some quarters that virtually all patents are to combinations. In fact, there has never been a modern Supreme Court grant of certiorari to consider the chemical obviousness case law line relating to a new compound nor any case in modern times to consider the obviousness of any invention other than a combination patent.”
Any Indian patent examiners out there willing to comment on their training experience. The last time I did a review of the training programs at the Indian patent office for the EU’s TIDP (Trade and Investment Development Program), it didn’t look too promising. To begin with, the Intellectual Property Training Institute (IPTI) at Nagpur which, inter alia was constituted to provide training to patent examiners proved to be somewhat of a failure. I enclose an excerpt of our recommendation to the TIDP below:
“Beside increase in number, there is also need to improve the efficiency of the patent examiners, by having more training programmes at regular intervals for patent examiners, particularly in newer areas of technology, such as biotechnology, information technology, bioinformatics, electronics etc. With the introduction of pharmaceutical product patents in India, this ought to be a major area of focus.
Currently patent examiners are provided training at the time of entry, by the Intellectual Property Training Institute (IPTI), Nagpur. It also conduct certain refresher courses for them occasionally, an aspect that will be discussed in detail later. Such training, however, needs to be more structured and focused. Often training programmes are carried out by the patent offices also. It has been gathered in the personal interviews with the examiners that there should be minimum defined qualifications for the trainers and these programmes should not be held in patent offices. The reliance on private practitioners to provide training ought to be minimal, as this can create complicated conflict situations, particularly when such practitioners have their matters before examiners
At the end of the training of patent examiners, a mere informal evaluation is made. It is recommended that a more formal mechanism for evaluation/validation be instituted to help in the determination of the level of absorption of training by examiners, as also to ensure that examiners take the training more seriously.”
But I will come back with a more comprehensive note on the Indian patent office, the IPTI and our rather puzzling efforts at not being able to come up with an electronic patent database (despite being a leading IT superpower) shortly.