By Natalie Brady, Jr. Assistant Editor
A United States patent is granted by the federal government and protects what you invent. However, there are still questions to be answered! How does a patent work? What are a patent examiner and a patent agent? Thanks to Don Kelly, a patent agent and former patent examiner, the answers are below!
AK: What is a patent?
DK: A patent is a certificate of ownership similar in many ways to a car title or house deed. The Patent Office (the federal agency known formally as the US Patent & Trademark Office) grants patents to people who show they invented new and useful technologies. The patent serves two purposes:
a. it gives the inventor exclusive rights to the technology for a limited time so they can keep others from making or using the invention without permission to do so;
b. the patent adds to the world’s technical knowledge so others can build upon the originally patented concept. If you think about it, most inventions are improvements on earlier inventions.
Natalie, I like to think of technology as being like a gigantic patchwork quilt where every new concept is represented by its own fabric color or pattern. As patents are granted, and technology “patches” are added, that quilt keeps getting bigger and bigger – and everyone benefits.
AK: How do you get a patent?
DK: Inventors must file a patent application that fully describes the inventions, how the inventions work or how they’re to be used. The patent application concludes with one or more “claims,” each specifying exactly what is “new” about the invention. The application must be accompanied by drawings (where appropriate) and filing fees that will pay for the examination. By the way, the Patent Office exists solely on collected fees, not taxpayer funds.
Patent applications can be very complex documents. A million or more patent applications are filed each year at national patent offices all around the world. Our US Patent Office alone receives around 500,000. Applications are typically filed by professional patent agents or patent attorneys qualified to advocate on behalf of their inventor/clients. The applications are examined by highly trained patent examiners.
AK: You started out as a patent examiner. Could you describe that job to me?
DK: The examination of patent applications demands sound knowledge and understanding of technology in at least one field, for example physical science, engineering, mathematics, computer science. The Patent Office usually recruits university graduates or draws experienced professionals from the private sector. In most cases, recruits begin their careers by going back to school. The Patent Office has its own in-house university called the Patent Academy where recruits study patent law and patent examination practice. For the first few years, each new examiner works relatively closely with a senior examiner or supervisor. Once they are qualified, typically after 5 or 6 years on the job, examiners are awarded full authority to work independently.
Each examiner is attached to an examining division and assigned a personal docket of patent applications pending in a very narrow technical field such as medical instruments, sports equipment, photography, computer games and so forth – depending, of course, upon her/his background. The Patent Office is a paperless workplace where all work is performed on computers. Many patent examiners work from home offices all across the country. Currently there are almost 7,000 US patent examiners.
Examiners must study each application to ensure it provides a full, clear invention description, and then perform a search of existing patent files and literature databases to determine if the invention is new or simply an obvious variation of what already exists. The examiner’s decision is reported in an Office Action mailed to the inventor or his/her representative. If the decision is negative, the inventor/representative may respond with arguments and application amendments in an attempt to win the patent. This interaction, known as patent prosecution, might last for many months or even longer. Around 60% of the patent applications eventually mature to US Patents.
AK: Why did you leave the patent office and become a patent agent?
DK: That’s a tough question, Natalie. I liked public service and felt I was making a positive impact, particularly with respect to independent inventor and small business concerns. I had enjoyed a full and eventful career with the Patent Office as an examiner and supervisor, technology center director and as Chief of Staff.
One of my favorite authors, Elisabeth Kubler-Ross questioned how geese know “when to fly to the sun…how we know when it’s time to move on.” Kubler-Ross suggests we have a “voice within that tells us certainly when to go forth into the unknown.” I often miss my Patent Office family, but I’m happy to have moved on. Sure, the thought of leaving Federal Service was unsettling for me but, in the dozen years that followed, I’ve served as chief executive of the Academy of Applied Science, adjunct professor at the Franklin Pierce Law Center, senior advisor for the International Intellectual Property Institute; and, as a Patent Agent I’ve worked hand-in-hand with many remarkable and inspiring inventors.
AK: You’ve been on both sides of the process – which do you like more?
DK: I like to think that there’s really only one side and that’s the side that advocates for progress. I think both patent examiners and patent agents can wave that flag. The US Patent System finds its roots in the US Constitution, Article 1, Section 8, where the Founding Fathers included it specifically to “promote progress of science and the useful
arts.” But I know what you’re asking, and my true answer would be that I still love and cherish the calling of Public Service. I recommend it.
AK: What are some of the more interesting patents you’ve seen?
DK: Every patent is unique (by definition) and reflects an inventor’s reflex when faced with a problem. But, I do have two favorites. One seems quite funny at first glance: Benjamin Oppenheimer’s 1879 Improvement in Fire Escapes, where a man is pictured plummeting downwardly, supported by an umbrella affixed to his head. On each foot, to cushion his landing, is a thick rubber pad.
But there’s a serious side. That invention emerged with the grave concern for sudden fires in another contemporary invention, multi-story buildings. During the 9/11 tragedy at the World Trade Center, a wave of applications hit the Patent Office with remarkably similar inventions.
My second favorite patent covers the invention that resulted in cell phones being GPS-ready. As a Stanford U. med student, Dr. Dan Schlager flew rescue missions on the University Life Flight chopper. He was frustrated that it often took too long to find heart attack victims who had dialed 9-1-1 on their car phones. His inventions have saved countless lives. I happily managed Danny’s global patent portfolio for several years. He’s my favorite inventor and one of my best friends.
AK: How many patents did you review at the patent office?
DK: I believe the records show my name on around 1000 granted patents. As an examining group director I was involved in reviewing the work of a 700-examiner staff, so I guess you could add a few more to that total.
AK: What are some of the common reasons a patent gets approved or denied?
DK: Patents are approved more readily when the applicant has done her homework. By that I mean the inventor and/or representative has invested the necessary effort to clearly describe the invention and define it relative to other similar technologies in the field. A patent search (review of pre-existing patent grants) in the field is always a great first step. Applications are usually denied when the examiner finds that the invention already exists, but perhaps wasn’t commercialized, or that the application presents merely an obvious variation of something that was well known.
AK: What advice would you give to someone if they think they have something that can be patented?
DK: My best advice is to learn more about the technical field (or invention category) before assuming that the idea is new. Again, a patent search is a good place to start.
Secondly, I often advise inventors to think very carefully about pursuing a patent grant.
When applying for a patent, the inventor’s objective is to control a segment of the marketplace. So, the choice is not really about the dream, but about the business…about serious investment of both time and money.
AK: Who has been a mentor to you?
DK: Dr. Forrest Bird has been a good friend and inspiring mentor for 20 years or more. He’s nearing 90, still has a remarkably sharp mind and as the inventor of the medical respirator, he’s a shrewd champion of the patent system. Forrest’s advice has always been: “Never assume you can’t do something…or that it’s too hard, and never-ever think for a moment that something is impossible.”
Last year, I nominated Dr. Bird for the National Medal of Innovation and Technology and proudly stood nearby as President Obama placed the medal about Forrest’s neck.