The patent machine
|In go applications, out come patents or rejections, but whats inside?
The stability of industry and innovation in the United States depends on intellectual property protection, and the U.S. Patent and Trademark Office (USPTO) plays a major role. But how is this government entity organized? How does it deal with the immense task of evaluating patents and trademarks?
Commerce and the director
In addition to the dramatic growth, Congress recently passed legislation (part of the American Inventors Protection Act of 1999) giving the office more managerial freedom by converting it into a performance-based organization. This is the second such conversion within the federal government; the U.S. Department of Educations Office of Student Financial Assistance changed into a performance-based organization in 1998. As a result of the USPTOs conversion, top management has been promoted and receives bonuses for meeting goals, and the organization has greater freedom in hiring personnel and purchasing supplies and services.
The change in status has raised the position of the top member of the USPTO from a deputy undersecretary to an undersecretary in the Department of Commerce (official title: Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office). The director has always been a political appointee; however, this position is now the only politically appointed post at the office, which reduces the impact of changing administrations (see box, "Not just patents").
As a political appointee, the director may often have interests that are the opposite of both the administration and Congress. The office is completely funded by patent and trademark fees; however, each year the administration and Congress appropriate only a portion of these fees to the next years USPTO budget, using the balance to fund other government projects. For 2001, the offices estimated revenue was $1.2 billion, of which the Clinton administration proposed skimming $117 million for other federal programs. The House voted to take away $900 million, but the final Senate budget returned it to the administrations level of $117 million. This issue is extremely contentious; some see this as a tax on innovation because fees go to support other federal programs rather than improving the patent process. Others cite the errors of mismanagement and spiraling costs at the U.S. Post Office as a lesson against letting a government agency keep its own books.
The director oversees the six offices whose functions define the USPTO. Most people do not realize that the USPTO has many other functions besides its patent and trademark divisions (e.g., one office handles disputes while three others deal with business and support functions).
The Office of Patent Programs Control reviews patent examination quality and reports the findings to improve the process. The Office of the Deputy Commissioner for Patent Examination Policy handles two primary policy areas. First, it communicates with foreign patent offices about the Patent Cooperation Treaty. This treaty is an agreement that allows inventors in different countries to seek patent protection in other member countries and attempts to streamline this process. The Patent Examination Policy Office also maintains and updates the Manual of Patent Examining Procedures. This mammoth manual is a guide to every detail of how patent applications are treated. It is available online at http://patents.ame.nd.edu/mpep/; printed out, it measures roughly 10 1/2 in. thick (a little light reading).
Patent examining groups
Examiners (usually 1015 of them) work together on closely related subjects in small groups called art units. Several (usually not more than six) related art units are organized into work groups, and several work groups covering a wide technology area are grouped into a technology center.
For example, if an application for a new gene chip is filed, the Office of Initial Patent Examination will receive the application and decide to which one of the following six technology centers to send the patent.
Obviously, the Biotechnology and Organic Chemistry technology center would be the best choice. This center would then classify the application and give it to the appropriate art unit. Art unit 1655 handles assays involving nucleic acids and so would most likely get this case.
What do examiners do? Examiners, whether primary or assistant, perform the following steps when an application is given to them: read and understand the patent, search prior art (previous patents, databases, and journals) to determine if this is a new invention, and examine the claim based on the law (basically, is it novel, nonobvious, and useful?). The examiner then sends a letter to the applicant stating any objections found during the examination. The applicant can then talk with the examiner about solutions and send an amendment that hopefully answers the examiners objections. If it does, the examiner allows the patent; if not, the application is rejected.
Michael Felton is an assistant editor of Modern Drug Discovery. Send your comments or questions regarding this article to firstname.lastname@example.org or the Editorial Office by fax at 202-776-8166 or by post at 1155 16th Street, NW; Washington, DC 20036.