30 September 2012

From the Patent Examiner's Mouth

At the first meeting of the Leeds Inventors Group many years ago, our first speaker Lawrence Smith-Higgins, Head of Business Outreach & Education at the Intellectual Property Office, promised to send us a patent examiner to address one of our meetings. I reminded Lawrence of that promise every time I visited the Intellectual Property Office for a hearing and at every outreach event at which we were both present. Eventually he relented and arranged for Kalim Yasseen to speak to us earlier this year.  Kalim did in fact address the Sheffield group to a packed house but, sadly, he fell ill and was unable to repeat his talk in Leeds.

Happily, Kalim's colleague, Sarah Whitehead, took his place and she was excellent. Starting from first principles, Sarah explained what a patent was and why an inventor or businessman or woman might want one. She distinguished patents from other intellectual property rights such as copyrights and design rights.  She outlined the inventors' bargain with the public - a monopoly in return for teaching the public how to make or work the invention - and showed how a patent specification reflects that deal. The description and drawings setting out the teaching and the claims the extent of the monopoly.   Patiently she educated the audience as to why the application had to be examined, how it was done and indeed why it seemed to take so long.  It is a very strong thing to grant a 20-year monopoly of the manufacture, importation, distribution and use of a new invention and it is not to be undertaken lightly. The British process may seem long drawn out but our Intellectual Property Office was significantly faster than many other countries'. Finally, Sarah talked about disputes over patents and how they may be resolved mentioning in particular the IPO's opinions service.

After her talk I invited Sarah to supper at "All Bar One". Over a hamburger and chips and vegetarian pad Thai (I had the burger and she the pad Thai) she told me a little more about her work and that of the examiners.  We discussed the practical effects of the Supreme Court's decision in Human Genome Sciences Inc v Eli Lilly and Company [2012] 1 All ER 1154, [2011] UKSC 51, [2012] RPC 6, [2012] Bus LR D37 (a case that I had blogged in "Patents: Human Genome Sciences Inc. v Eli Little and Co" IP/IT Update 9 Nov 2011).  Turning to other matters, she mentioned that she came from Derbyshire, that she was educated at the Universities of Bath and Manchester and that her research had been in life sciences. 

One of the many matters upon which we agreed was that the cost and risk of enforcement had inhibited British businesses from protecting their research and development adequately. We welcomed the new small claims track to the Patents County Court (see "Patents County Court - the New Small Claims Track Rules" IP/IT Update 20 Sept 2012) which will be the topic of my talk to Sheffield Inventors Group tomorrow 1 Oct 2012 at Sheffield Central Library at 18:00 and Liverpool Inventors Club at QualitySolicitors Jackson & Canter at 88 Church Street, Liverpool, L1 3AY on 29 Oct at 18:00.

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