Thursday, June 13, 2013

Beware the moonlighting bureaucrat

MOONIn my last post I posed the question of whether we would see New Zealand patent examiners moonlighting as patent attorneys. This idea is not as far-fetched as it sounds. Consider the following example. I am not making any of this up.

The applicant

A few years ago an inventor in a rural New Zealand town came up with an invention for a spray tank assembly for an all terrain vehicle (ATV). He prepared and filed a patent application in New Zealand through a reputable patent attorney firm.

The inventor had a year within which to decide where to file further patent applications for his invention. The records show that he filed a PCT international application with the Intellectual Property Office of New Zealand (IPONZ).

There was obviously a change in advisor at some point between the filing dates of the New Zealand application and the PCT application. The inventor named someone else as address for correspondence on the PCT Request form.

The application

We can quickly see where things start going wrong. The PCT Request form lists a total of 21 pages filed. These include 3 request pages, 11 description pages, and 7 drawings pages. No claims pages. No abstract page.

WIPO published the PCT application with the International Search Report (ISR) attached. The international examiner managed to produce some prior art even though there were no claims to search.

The examiner noted in the International Preliminary Report on Patentability (IPRP) that '[t]here is no suitable claim on which I can base a search or opinion'. In fact, the examiner went on to state that 'the application has no claims'.

The PCT application has lapsed. Because the PCT application was published there is no scope for the inventor to secure patent protection for the invention described in the published application. Anywhere.

So who would encourage an inventor to file a PCT patent application with no claims? The inventor has forked out several thousand dollars in PCT patent office fees and now has nothing to show for it.

The advisor

Various publications describe the advisor as an IP strategist, one of the world's leading intellectual property experts, and an industry expert. There is no record of the advisor ever appearing on the New Zealand Patent Attorney Register.

The advisor authored a document while under contract to IPONZ to 'explore the viability of a support and advisory service for SMEs'. One of the proposals in the document, if implemented, would see IPONZ offer through its website:
  • IP search;
  • designs search and commentary;
  • patentability search;
  • patent validity search; and
  • freedom to operate search (all IP).

IPONZ made it clear that the views expressed, and any findings outlined, in the report are those of the author and not IPONZ. As far as I know, IPONZ has not implemented any of the above options.

What now?

There are quite a few observations we can make here. One is that a PCT patent specification should have claims. Most patent attorneys know that. Some IP strategists and leading intellectual property experts do not.

It is important when engaging an IP advisor to reassure yourself that they know what they are doing. Especially if they are a moonlighting bureaucrat. The advice may be cheap or even free. But what if it means losing potentially valuable IP rights forever? I guess it really is a case of getting what you pay for.

Photo courtesy of author Nick. K. under Creative Commons licence.

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