Patent

TRAINING PATENT EXAMINERS


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.

Shamnad Basheer

Shamnad Basheer

Prof (Dr) Shamnad Basheer founded SpicyIP in 2005. He is currently the Honorary Research Chair of IP Law at Nirma University and a visiting professor of law at the National Law School (NLS), Bangalore. He is also the Founder of IDIA, a project to train underprivileged students for admissions to the leading law schools. He served for two years as an expert on the IP global advisory council (GAC) of the World Economic Forum (WEF). In 2015, he received the Infosys Prize in Humanities in 2015 for his work on legal education and on democratising the discourse around intellectual property law and policy. The jury was headed by Nobel laureate, Prof Amartya Sen. Professional History: After graduating from the NLS, Bangalore Professor Basheer joinedAnand and Anand, one of India’s leading IP firms. He went on to head their telecommunication and technology practice and was rated by the IFLR as a leading technology lawyer. He left for the University of Oxford to pursue post-graduate studies, completing the BCL, MPhil and DPhil as a Wellcome Trust scholar. His first academic appointment was at the George Washington University Law School, where he served as the Frank H Marks Visiting Associate Professor of IP Law. He then relocated to India in 2008 to take up the MHRD Chaired Professorship in IP Law at WB NUJS, a leading Indian law school. Prof Basheer has published widely and his articles have won awards, including those instituted by ATRIP and the Stanford Technology Law Review. He is consulted widely by the government, industry, international organisations and civil society on a variety of IP issues. He also serves on several government committees.

8 comments.

  1. Avatarchandra

    shamnad
    patent peer reveiw as envisaged by prof bhaven sampat,and access to Indian patent office Examination reports are,
    i feel, will be good corrective measures …

    Reply
  2. AvatarGenericIPguy

    Shamnad,
    We all know that patent examiners in Indian P O are poorly trained.
    Also, those of them who do go abroad for training on WIPO/ JPO grants, what do come back and execute?
    They go abroad for ‘learning’ trips and come with no executable plan to improve the patent office management/ access to Indian patents etc.
    I remember being told that some foreign database providers were ready to digitise Indian patent data for free, if they could also hawk it commercially. Guess what, our PTO folks did not allow that too. That only means we do not get quick access to Indian patents.

    Reply
  3. AvatarShamnad Basheer

    Dear Chandra,

    Peer Review is being tried and tested out now in the US. I’m sure this will turn out to be succesful and there will be important lessons for India to learn.

    As for examination reports and publishing them, you’re absolutely right–we need to move towards a more transparent system, where all of this is made available. I remember patent office decisions were published for sometime (primarily pushed by an ex-Controller, Mr ShantiKumar)–sadly, this was discontinued. We need more access to this information and more transparency, so that folks can debate these decisions and make the patent office a little more accountable.

    Reply
  4. AvatarShamnad Basheer

    Dear GenericIPGuy,

    Thanks for your comments. You’re right–the training programs leave much to be desired–and one off foreign trips are not going to help us in anyway.

    One part of our review of the patent office showed that the foreign trips were initially meant as “incentive” to make examiners perform better–however, now, almost all examiners make it abroad after a certain number of years at the patent office (its become somewhat of a tradition and I wouldn’t be surprised if one of them soon filed a case, claiming that he/she is entitled to such a trip. Talk about “incentives”!!

    As for digitization, the sheer lack of transparency and accountability has ensured that those who failed to execute (depsite a huge budget) this were never bought to task. Wonder where that money went?

    Reply
  5. AvatarPatent

    Generic ipguy is right.Training programs abroad for Indian examiners are haphazardly planned and are not systematic.They are being sent abroad in small groups of 3-4. At this rate it may take years for all Examiners to be trained.EU TIDP,IPTI programs are conducted merely to show on record that the examiners have been trained with foreign support.At any rate Examiners cannot do anything to improve management/access to Indian patents because they are not part of the policy-making set up. More important is that the best candidates among Examiners are the first to leave the organization for better prospects elsewhere.This issue of attrition is largely ignored by the decision-makers. What is really required is a change in attitude in the entire system.

    Reply
  6. AvatarShamnad Basheer

    Dear Patents,

    Thanks for your comments, which I think are spot on. Attrition is certainly a big problem–not just in India, but in patent offices the world over (and its not just drafting skill sets that are sought after when the private sector recruits patent office personnel–its also with a view to having someone who can move things at the patent office, knows the right people etc etc…

    Reply
  7. Avatarapm

    i am selected for the post of Petent examinar….should i join for same??….presently i am working in private sector with good salary….

    Reply

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