Adam,
In spite of the uses people make of cited references published in patents, the
ONLY aim of examiner citations is to determine whether a claimed invention is
patentable.
Patents can be granted only to new and non-obvious inventions. When a patent
application is filed, the applicant affirms that he/she/it believes that the
thing or process described by the claims has never previously be described in a
printed publication. A patent examiner is given the job of searching all of the
prior published literature to find out whether the invention has actually been
described or if something very similar has been published. The examiner cites
the reveferences that come closest to describing the claimed invention.
Sometimes, but not always, the examiner cites additional references that show
the state of the art and do not seem to overlap with the claims in the patent
application. The inventor and examiner then carry on correspondence during
which they debate whether the invention is or is not patentable in view of the
references cited.
The cited references are handled differently by different patent offices. The
EPO and WIPO publish a search report 18-months after the priority filing date.
The report has codes indicating whether the examiner thought the reference
actually described the invention (X), could be combined with information in
another reference to make the claimed invention obvious (Y), or simply described
the state of the art (A). The USPTO doesn't (yet) publish the patent
application before granting a patent, so all the cited references failed to
establish that there were no patentable claims in the application.
Patent examiners have no responsibility for evaluating the quality of the
references they cite. They are not charged with finding "representative"
references in the field. They are simply guarding the public against the grant
of patents that are already in the public domain. They are only required to
cite the best references they can find - a single reference that anticipates the
claims is the most desirable situation. If they cite "important"
publications,it is a statistical accident.
Let me give a hypothetical example. Let's say I am an examiner doing a search
on a patent application that claims a combination of aspirin and phenobarbitol.
There are thousands of publications about these two compounds; I am not required
to cite all of them. I read some of the references and find one that suggests
administering the two drugs at the same time. This is not standard therapy, but
it nearly matches the language of the claim I'm examining, and I cite it.
Hope this helps,
Edlyn Simmons
Registered US Patent Agent No. 28,668
Section Head
Business Intelligence Services
The Procter & Gamble Company
5299 Spring Grove Ave.
Cincinnati, Ohio 45217
Phone: (513) 627-5664 Fax: (513) 627-6854
Email: simmons.es@pg.com
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From: Adam Bartkowski <a.bartkowski@pz.zgora.pl> on 02/14/2000 06:00 AM
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Subject: Re: Citation rules - cont.
Hello once again,
Thanks for all who answered. I have read WIPO document. I have had some
problems with categories X and Y definitions (due to my English) - I'd be very
grateful for explanation of the explanation :-)
As I understood the main aim of citation is to give a view to prior art. To do
this examiner should cite _similar_ patents, not necessirely _the_best_ones_.
I have also found two other texts related to the question. One can be found in
the article by Narin et al. (see below): "it is the responsibility of the
patent applicant and his attorney, and of the patent examiner, to identify,
through various references cited, _all_of_the_important_prior_art_ upon which
the issued patent improves. These references are chosen and / or screened by
the patent examiner, who is <<not called upon to cite all references that are
available, but only the best>>" (the inner quotation comes from PTO document on
examining procedures, referenced in the paper). The second one can be found in
the paper by Trajtenberg and comes from Office of Technology Assessment and
Forecast. Particularely the first one suggests that references should concern
not only similar documents, but simultanuously the best known.
Citations are generally used as a sign of importance, impact, value or even
quality of particular innovations. Statistics show they are strongly correlated
with other (economical) measures of value. I am interested what could be the
consequences if the referenced patents are only similar? I think on the term
"representativeness" for such situation - cited patents would be the most
representative for the field (defined through classification), not necessary
the best. As I know there were no research concerning legal / commonly accepted
regulations and examiners motivations to cite particular patents (or generally
- documents), but I have only limited access to the literature. It would be
interested to perform such survey among patent lawyers to get new (?) view on
the problem.
Thanks for your attention, any comments welcomed
References:
F. Narin, K.S. Hamilton, D, Olivastro: The increasing linkage between U.S.
technology and public science. Research Policy 26(1997):317-330
M. Trajtenberg: A penny for your quotes: patent citations and the value of
innovations. RAND Journal of Economics, Vol. 21, No. 1, Spring 1990
--
Adam Bartkowski (a.bartkowski@pz.zgora.pl)
Technical University
Institute of Informatics and Management
ul. Podgórna 50
65-246 Zielona Góra
Poland
>>> Real eyes realize real lies <<<
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