A LAWYER COMPLAINS ABOUT SOME EXAMINERS' PROBLEMS WITH ENGLISH

While several people writing in to you have offered explanations for the poor examination work being done at the PTO, one explanation that I haven't heard is this: many examiners can't speak English. My last two patent examiners have been unable to speak English. And by that, I mean that they literally could not pronounce basic English words and could not handle elementary syntactical rules, such as subject-verb agreement. To offer some examples: I had to explain to one them the meaning of a very basic sentence that she was misreading and to which real legal significance was attached. I thought, "here I am, explaining to a U.S. patent examiner the difference between 'rotate' and 'slide'." Another of them pronounces the "g" in "sign" and pronounces the "i" as though it were short. Thus, "sign" rhymes with "riggin". He pronounces "assigned" so that it rhymes with "a rig need." As far as I can tell, he uses basically no conjuctions (and, or) and no articles (a, the). I cannot even discuss the case with the latter examiner on the phone because it's basically pointless: I cannot understand him. The legal import of a patent lies in the claims, and claims consists of WORDS. Words that happen, in this country, to be ENGLISH words. Why in the world would the gatekeepers of the claims, upon which 100-million dollar questions sometimes turn, be people who have not got a sixth-grader's command of vocabulary, syntax, and pronunciation? I think the patent examiner requirements are completely backwards. The very first threshold requirement should be that an examiner have command of the English language at the level of at least a college graduate with a degree in English. Absent such a command, his or her opinion on what a spec supposedly enables is meaningless. But instead, a technical degree is required. That makes a lot of sense. Einstein himself would have been worthless as a patent examiner in a language he didn't speak. Moreover, what has a technical degree got to do with a business method? There's your answer as to why all the ridiculous biz meth patents issue. Again, the most essential and functional nature of a patent is LINGUISTIC. Language is what the question of infringement turns on. How can a person who can't read tell what "reads on"? As long as people who don't speak English hold the keys to patent claims in English based on specifications in English, the U.S. patent system will be inherently laughable. The same holds equally true for other patent systems that use other languages, so I'm not being ethnocentric here.

Patent case law: decisions and implications from 19th Century

WHITTEMORE v. CUTTER (29 F. Cas. 1120 [May 1813]): Experimental use of a patented invention for scientific ["philosophical"] research purposes is exempt from patent infringement - a fair use. WHEATON v. PETERS (33 U.S. 591 [January 1834]) Question: "In what respect does the right of an author differ from that of an individual who has invented a most useful and valuable machine? The result of their labours may be equally beneficial to society, and in their respective spheres they may be alike distinguished for mental vigour." If there isn't a difference, Answer: "It would seem therefore that the existence of a principle [term of protection] which operates so unequally, may well be doubted." Dissent: The "and" of "authors and inventors" is distributive, the subjects distinct in the mind of Congress. JACOBS v. BAKER (74 U.S. 295 [December 1868]): Novel architectural plans could be patentable or copyrightable. COCHRANE v. DEENER (94 U.S. 780 [March 1877]): Process is as patentable as machinery, independent of form of instruments used, if new and useful. MACHINE CO. v. MURPHY (97 U.S. 120 [October 1877]): Two devices doing the same work in the same way with the same results, are the same, even if they differ in name, form or shape. BAKER v. SELDEN (101 U.S. 99 [October 1879]): Methods (of bookkeeping) not copyrightable, but potentially patentable. Artistic methods potentially patentable. TELEPHONE CASES (AMERICAN BELL TELEPHONE) (126 U.S. 1, 533 [March 1888]): An art - a process which is useful, is as patentable as a machine, manufacture, or composition of matter. Descriptions of means in the patent is only necessary to show that the process can be used. BRISTOL v. EQUITABLE LIFE ASSURANCE SOCIETY (5 N.Y.S. 131 [March 1889]): Method of soliciting insurance neither patentable nor copyrightable as idea.

Olive oil inspired inventive thoughts:

The Wall Street Journal of June 7, 2007, and New York Times, had two major articles on patent reform. The problem is that the reporters don't know enough about patent practices to realize a lot of what they are being told (and then reporting), especially from PTO management, is nonsense. The Wall Street Journal article started out with "U.S. patent law, already shaken up by a Supreme Court ruling this spring, ...". I assume he is referring to KSR, but did the KSR decision, with its bad semantics, really shake up much about obviousness? Or was it just a tweak, a papal reminder to the CAFC of who has the real authority. Interestingly, an article in the food section of the New York Times has a good example of a non-obvious discovery. The article is titled "Extra virgin anti-inflammatories" (NY Times, 6 June 2007, D3), and reports on annual tastings of extra virgin olive oils. But it includes a mention of a scientific discovery, as follows:

At the 1999 international workshop on molecular and physical gastronomy [in Sicily], ... the physicists Ugo and Beatrice Palma brought along [olive] oil freshly pressed from their own trees. Dr. Gary Beauchamp [director of the Monell Chemical Senses Center in Philadelphia] tasted the oil and felt his throat burn, as did I and all the other attendees [a side effect of very aromatic virgin olive oils]. But he was the only one who immediately thought of ibuprofen. Not an obvious thought? Dr. Beauchamp happened to be an ibuprofen connoisseur. He and a Monell colleague, Dr. Paul Breslin, had been trying to help a manufacturer replace acetaminophen with ibuprofen in its liquid cold and flu medicine. The medicine tasted fine until it was swallowed. Consumer panels described the unpleasant sensation as bitterness, but Dr. Beauchamp recognized it as an irritation akin to the pungency of black pepper and chilies, strangely localized to the back of the throat. And he recognized it again in Sicily. "The moment I felt that burn from Ugo and Beatrice's oil, I saw the whole picture in my head.", Dr. Beauchamp recalled last week. "There's a natural analogue of ibuprofen in olive oil, and it could have anti-inflammatory properties too." He, Dr. Breslin and several collaborators confirmed that the pungent substance in olive oil is a phenolic chemical, which they name oleocanthal. And they showed that oleocanthal is even more effective than ibuprofen at inhibiting enzymes in the body that create inflammation. ... [In a 2005 Nature article], they suggested that the oleocanthol in pungent olive oils might be one of the things that make traditional Mediterranean diets so healthful. A deliciously non-obvious discovery!