

Are educational requirements for the patent bar out of date? - geebee

I've been thinking about the problems the patent office is having with software patents lately, and it lead me to reconsider the educational requirements for sitting for the patent bar.<p>Right now, you typically need a degree in a physical science, biological science, or engineering to take the exam and become a patent agent.  <p>Interestingly, Mathematics is specifically excluded as an acceptable background in the "non-acceptable coursework" section.<p>Now obviously I'm biased because I was a pure mathematics major, but it seems to me that this rule excludes a huge number of people who would be most capable of reviewing a massive new area of patents - namely, algorithms.<p>Technically, algorithms aren't patentable, which is probably why mathematics was excluded from the acceptable academic background list - Paul mentioned this when he wrote his "Are Software Patents Evil" essay...<p>"Unfortunately, patent law is inconsistent on this point. Patent law in most countries says that algorithms aren't patentable. This rule is left over from a time when "algorithm" meant something like the Sieve of Eratosthenes. In 1800, people could not see as readily as we can that a great many patents on mechanical objects were really patents on the algorithms they embodied..."<p>The patent bar has decided (for all practical purposes) that mathematics <i>is</i> patentable, but they continute to exclude people with a mathematics background.  <p>I truly do not want to become a patent agent - but it does disturb me that the people who are licensed to "prosecute" (ie., file for) patents and/or "review" (ie., grant) patents on algorithms are specifically not supposed to have a math background.  <p>Anyone care to comment or leave your thoughts on this?<p>(here's a link to the requirements doc:
<a href="http://www.uspto.gov/web/offices/dcom/olia/oed/grb0403.pdf" rel="nofollow">http://www.uspto.gov/web/offices/dcom/olia/oed/grb0403.pdf</a>)

======
onceageek
I researched a patent examiner who was examining the software (algorithm)
patent I was managing and not to my surprise had a pure bio/life science
background!!!

He dismissed all the claims quoting basic statutes that it was not novel and
cannot be patented. So the patent attorneys had to rebut the office action and
ultimately ended up costing more (almost twice).

I understand you cannot have experts for all the technology specialties. For
Ex. Even if you masters in EE, there are so many different fields in EE. For
instance, if I am a MSEE and I focussed on IC processing, I might know the
intricacies ( and innovative elements) of MEMS processing or wireless
communication algorithms.

Having said that, most (of late some) patents have elements of novelty in it.
So I wish the examiners have the basic background in reviewing the patents.
This would ultimately reduce patent cost IMHO.

End of my Thursday rant.

------
brlewis
Nobody is qualified to judge algorithm novelty. There is just too much public
information. It's as if there were a machine shop in every home, and millions
blogged daily about their mechanical inventions.

~~~
geebee
yeah, this raises another issue - whether algorithms should be patented in the
first place.

