Wednesday, March 17, 2010

Does the PTO treat non-attorney applicants fairly?

The independent, garage-based inventor has become a sort of post-industrial age hero in the United States, and you won't have to look any further than the USPTO's rules, regulations, and programs to see that our government has made a commitment to supporting these folks. Small entities enjoy lower filing fees, information about marketing and protecting inventions, and, hey, a nation-wide network of library partners to support free access to patent information.

Another key support system for independent inventors is codified in the Manual of Patent Examining Procedure. Under MPEP Section 707.07(j), applicants who do not use the services of a registered attorney or agent (called pro se applicants) can expect to get help in drafting their application from their assigned examiner. If the examiner determines that there is "patentable subject matter disclosed" in the application, then she or he should, if the patent is not expertly drafted, help the applicant out by drafting a claim or two to demonstrate the type of claims they are looking for.

This provision gives a leg up to inventors who are unfamiliar with the ups and downs of patent drafting, but who nevertheless have a patentable invention. This section of the MPEP more or less promises that you don't have to be a patent agent or attorney to draft an application.

In a piece in the latest Inventor's Digest, Auburn University Professor Paul M. Swamidass reports that an investigation shows that examiners do not always give pro se applications the consideration that they deserve.

Professor Swamidass, who is affiliated with the Business and Engineering schools at Auburn, subjected himself to a pro-se examination for an invention (inexpensive, pre-fabricated safety strips for the sides of paved roads) whose subject matter was likely patentable.

Long story short, Swamidass had a largely unsatisfactory patent prosecution. He evaluated his experience based upon the criteria laid out in MPEP 707.07(j), and found that his examiner largely failed to meet these obligations. He eventually received the patent in spite of, rather than thanks to, his interactions with the examiner.

Swamidass' research, which he conducted for an upcoming article in the John Marshall Review of Intellectual Property Law (look for it in Spring 2010) suggests a systemic lack of support for pro se applicants at the USPTO.* There seems to be enormous pressure on examiners to quickly and accurately prosecute patents; to me, the take-away here is that independent inventors and examiners both would benefit from more person-to-person interaction and that there should be a way for examiners to justify the extra time required to handle such examinations. Swamidass recommends separate examiners for pro se applications, which is one possible solution.

Considering the contributions that independent inventors make to technology and the economy, it is certainly worth considering any option to support them.

*As a librarian, I feel obligated to point out that Swamidass' research (one application, one examiner) doesn't strike me as comprehensive enough to use as the basis for a general condemnation of PTO procedures. It is, however, suggestive, and I'll look forward to reading the full paper.

The abridged version of the paper ran in the April Inventor's Digest. It looks like it hasn't been reprinted on their website and there's a couple-month embargo on online access through library databases, so your best bet to read it is to come to the library. It will be on display in the Patent and Trademark Center.

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