STEPHANUS LE ROUX / SHUTTERSTOCK.COM
Providing clear explanations, referencing international guidelines and choosing examiners with the right skillset will all help patent applicants, says Lino Almazán of Becerril, Coca & Becerril.
With technology developing so fast, patentees often combine different technical fields when seeking protection, which represents a challenge for patent examination. The following examples require a combination of technical knowledge from several areas to make the inventions useful: computer-implemented inventions in which software improves a process; nanochips that can be implanted in the human body to interact with various communication devices; household appliances that can be connected to the internet to communicate with users and make decisions for supplying foods; and pipes that incorporate a novel chemical coating for improving their sealing.
In patent examination practice, it makes sense to assign an invention to a specific technical area based mainly on patent classification as well as by considering the application as a whole, ie, its title, abstract and even some parts of the specification, figures and claims. In patent offices and law firms it is common to find specialised fields such as mechanics, electronics and life sciences for handling the prosecution of patent applications.
For inventions combining different technical fields, however, the relevant examiner may find an invention difficult to understand when the advantageous effect is obtained by a technical feature outside the examiner’s expertise. This may complicate the substantive examination of the invention and affect patent quality.
Expert views
In practice, different situations arise during examination depending on the examiner. For example, some examiners consult those specialising in other technical areas and even ask the applicant to file all the necessary information in order to properly understand the invention. Likewise, in some cases where the examiner determines that the novelty of the invention lies in another technical area, he or she asks for the application to be reassigned to another examiner with knowledge in that area.
Moreover, this convergence has meant examiners often use examination work by foreign offices to support their assessment of patentability. However, there are cases where examiners assess only technical features they are familiar with, and so do not properly examine the invention.
For instance, it is highly probable that a patent application covering a pipe is assigned to the mechanical field during examination. However, assuming that according to the application’s specification the pipe’s novelty is given by a coating including a new compound on both ends of it, this invention could be considered within the mechanical or chemical field.
It is possible that if the application is examined by an examiner specialising in the mechanical area, he or she focuses on the structure of the pipe but not the technical features of the compound of the coating—which are commonly covered by the chemical field. Therefore, the initial examination could not consider the essential technical feature of the coating, which in this case represents the novelty of the invention.
As an additional example, there might be an application for a container for a specific compound that has as an essential technical feature—a screw made by a specific material that differs from those in the prior art, as it is resistant to degradation of the compound—and such features are commonly evaluated in the chemical area. If the application is assigned to the mechanical field, it is very likely that the examiner will not consider the specific novel features referring to the material of the screw but only the structural elements of the container.
Therefore, in order to carry out an appropriate examination, the examiner could either consult a colleague from the chemical area or ask that the application be reassigned to another examiner with a chemical background, since it is clear that the new and inventive features rely on the properties of the screw’s material.
Guidance needed
The lack of clear guidelines for examining this kind of invention presents great challenges to patent offices concerning the examination practices that should be implemented. Practices might include creating interdisciplinary groups and/or new substantive examination areas; providing courses or workshops to identify cases in which the patentability requirements are fulfilled as a result of a technical feature different from the main technical field; and perhaps amending legislation to expedite the prosecution of these inventions.
Certain legislation does provide guidelines for the substantive examination of these types of inventions. For example, the “Patent Cooperation Treaty International Search and Preliminary Examination Guidelines” provide instructions on international search and examination of patent applications. These guidelines must be considered as general rules but do establish that examiners are permitted to go further in exceptional cases. In particular, for example, an examiner is allowed to consult other examiners in different technical fields to ensure that he or she carries out a proper search.
In the US, the “Manual of Patent Examining Procedure” is used as a reference for practices and procedures relevant to prosecuting applications. The examiner may require additional information necessary to properly examine the invention and is allowed to consult commercial databases, carry out additional searches, and require the filing of non-patent literature related to the invention or information (such as diagrams and figures) used during the development of the invention, etc. This additional information can be requested by the examiner to carry out an appropriate examination of inventions combining different technical fields.
Finally, the European Patent Office has “Guidelines for Examination”, which should be considered only as general instructions. However, they do allow examiners to use additional options if the invention requires searching in a wide set of specialised fields. The examiner may consult other examiners for advice on any number of issues, such as using online searches in databases; understanding aspects of the claimed invention which may lie outside the area of the examiner’s technical expertise; constructing a search strategy; and/or interpreting the relevance of a prior art document for determining patentability.
As in Mexico, if local legislation does not provide any guidance on assessing these types of inventions, it is recommended that the applicant or agent handling the application communicates closely with the relevant examiner in order to allow him or her to clearly understand the invention. Examiners are always willing to discuss the benefits of any invention during personal interviews.
Furthermore, explaining an invention in a
clear and detailed way, preferably in the application or even during the interviews, has helped to expedite prosecution of these inventions. Clearly explaining features not
falling within the main technical field of the invention is recommended. It can also be persuasive to include in the application original examples that compare the invention to the state of the art in order to demonstrate the technical advantages obtained by a technical feature outside the invention’s technical field.
Lino Almazán is an engineer in the patent technical department at Becerril, Coca & Becerril. As a department engineer, he focuses his practice on substantive official actions concerning patent applications issued by the Mexican Institute of Industrial Property in the chemical, pharmaceutical and biotechnological areas. He can be contacted at: lalmazan@bcb.com.mx
Lino Almazán, Becerril, Coca & Becerril, patent, inerternet, patent classification, chemical, coating, examiner, European Patent Office,
