Sunday, August 3, 2008

European attorney also complains about USPTO patent examiner's English

Regarding the previous post on the USPTO's problems with English, an attorney from Europe had this to contribute:
This is fantastic! At last we have an admission from a practitioner that "the essential and functional nature of a patent is LINGUISTIC". This side of the Atlantic we've long suspected this to be case - perpetuated by the unfriendly terminology used not only by the USPTO but also the lawyers using the system. Many of my clients, several of whom have what they believe to be a reasonable command of English (having been brought up in England), constantly struggle against US examiners who get bogged down in semantics while the technical differences between an invention and the prior art seem to get lost in the process. Why your correspondent thinks that the job could be done without a technical degree is beyond me. I'm not saying our system is perfect - however, I've got a great deal of respect for EPO examiners who not only need to be technical experts (many are PhDs in their chosen technical subjects) but also have to have command (I use the term deliberately) of English, French and German. I have direct experience of working with a Greek examiner in the medium of English, discussing by telephone the content of prior art documents published in French and German. The discussion worked because we were both concerned with the technical content of the case, not with a theoretical and semantic debate on the words used. As a matter of interest, I had one heck of a job getting the same case through the USPTO precisely because we couldn't agree on the exact words to be used - the examiner kept insisting on changes that altered the technical disclosure to such an extent that the claim functionally was a mess. I think one of the fundamental disciplines that we as European Patent Attorneys learn at an early stage is to write patent applications in a way that aids translation - we know that any granted European Patent will need to be translated into a variety of languages so using plain English with standard meanings is essential. I can't tell you how many times I have had to help a struggling translator trying to translate a US originating patent application into French or German - whoever said we were two nations divided by a common language must have had this situation in mind at the time. I have no solution to offer, except to say that the job of an EPO examiner, while not normally for life, is considered a secure and useful graduate career, with a good standard of living in Munich and healthy tax breaks. I know nothing of the package offered to US examiners, but based on the perennial shortage at the USPTO would it be fair to suggest that the job is less attractive over with you guys?

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