by Manny Schecter, IBM Chief Patent Counsel
Enactment of the America Invents Act has generated considerable excitement in the US. The USPTO is developing implementation rules, legal associations are recommending strategies for operating under the new law, and pundits are speculating as to what aspects of the Act will achieve their desired objectives (or not). As exhilarating as all of this is, we should not forget the basics.
At its core the patent system still revolves around patent examiners who compare inventions described and claimed in patent applications with the most relevant prior art. Examiners must be able to sufficiently understand the inventions and the prior art to adequately do their job – a huge challenge given the newness of the information examiners work with every day. As the pace of technological advancement quickens, it becomes even more difficult for examiners to maintain the cutting-edge knowledge they require.
There are, of course, publications and databases to help examiners. But real world exposure to technology and interactive exchange with researchers in the field can be particularly useful.
Users of the patent system should take an active role in the examiner education process. Extending the knowledge-base of examiners promotes more robust examination and helps ensure that granted patents are novel and non-obvious. For patentees, this means more confidence in the validity of their patents. At the same time, the public can avoid diverting resources to designing around, challenging, or defending against questionable patents. It is also simply wrong for users of the patent system to criticize examiner performance, as many do, without helping to provide the technical education needed for improvement.
IBM is often asked to provide educational speakers on information technology for examiners. We are proud to cooperate and provide such education in the hopes of improving patent examination efficiency and accuracy, and in promoting the public’s confidence in the patent system. We encourage others to do the same.