Q&A with former patent examiner Tara Ho on innovation

Each month we interview a different expert for their insider’s perspective on innovation. This month: Q&A with Tara Ho, an industrial engineer who served as a patent examiner at the U.S. Patent & Trademark Office (USPTO) before leaving the government to pursue a legal career. Now a full-time employee at AbsolutelyNew, she comes to the table with an insider’s understanding and practicality towards patenting. Here’s perspective from Tara:

 

Q: What are 1 or 2 things many inventors probably don’t know about the patenting process and how USPTO operates, that could help them be more successful during the patenting process?

 

Tara: The USPTO has an application backlog exceeding 3 years. So be patient. Also, most ideas are not wholly novel and unique, so expect a complex revision process. 

 

Q: How, if at all, does a patent examiner look at an invention differently than a patent lawyer looks at an invention?

 

Tara: Both are methodical in looking at an invention, but they approach it from opposite sides and with different interests. The patent examiner looks at existing patents to ensure the invention does not already exist in the patent world, to protect inventors with their existing patent rights. The patent attorney, meanwhile, looks at existing patents in order to craft a case that an invention is novel and unique compared to existing patents.

 

Q: Any common pitfalls that inventors can easily avoid when working with the USPTO?

 

Tara: Always have the proper fees, signature, and items in the application. Missing parts only delay the process.

 

Q: Any simple tips on how to get an application reviewed and approved faster?

 

Tara: As the Director mentioned in his interview with you (Editor’s Note: click here to read our November 2009 interview with USPTO Director David Kappos), you should try to set up an interview, either over the phone or in person, as it will expedite the revisions. Also, having direct contact with the examiner and/or her supervisor helps put a “face” to a name.

 

Q: Do you have any other words of wisdom for people as they ready their applications?

 

Tara: I can’t state this strongly enough: be patient.

 

Q: Stepping back for a minute, what are the basic requirements for someone to become a patent examiner? Does one need a legal background?

 

Tara: Patent examiners are required to have a scientific background so that they can properly review and assess the applications brought before them. Most examiners have a relevant scientific background by degree in an area such as biology, chemistry, engineering, or computer science. Persons without a scientific degree can become examiners after successfully petitioning that they have the scientific understanding based on work experience, courses taken, and/or other skills. No legal background is necessary to become a patent examiner.

 

Q: And how are applications assigned to individual patent examiners—is it by geography, area of expertise, something else entirely?

 

Tara: The Patent Office is divided into art units by type of art (with “art” meaning invention in this case). Because I have a background in industrial engineering, I worked in a manufacturing art unit, specializing in staplers and impact tools.

 

Q: Can you tell us about the most remarkable invention you saw when you were at the USPTO?

 

Tara: My friend examined toilet seats. Enough said.

 

Q: Have you ever invented anything, and if so, what?

 

Tara: No, but I appreciate innovation and have a lot of respect for people who invent.

 

Q: What’s your favorite invention and why?

 

Tara: Probably the computer, since I am on it all day long.

 

Editor’s Note: Have a patenting question for Tara? You can reply to this e-mail or click here to contact us.

Comments

[Nick Tea]

The QA have made me realize i am stuck in the day dreamer state of mind. From a young age I have written my ideas down. Watched some created as I still just dream about it. Wondering why for what ever reason I have not tried. Just ideas now I am working on the designs again i find myself stuck. After researching companies and the next step to bringing my ideas to life. Again Frustrated back falling into the day dreaming state of mind.

[Alan Holbrook]

Comment and question for Tara Ho,

I have eight patents now and another one being examined now, which has been going on for
three years, I have had to go to the examiners supervisor, due to his misunderstanding (incompetence ) and finale had to go to the supervisors`s supervisor.
Who had the patent information transferred to her, two months ago, and I am still waiting
for an answer. The patent is for a Utility patent, the first examiner pays no attention
to the drawings, does not refer to them , only uses the claims .I don`t think I have
ever seen a patent that did not rely heavily on the drawings. The current examiner says she thinks
the first examiner has been searching in the wrong category, he`s not only in the wrong category,
he`s in the wrong book. Very frustrating, to say nothing about the time lost getting the product
on the market’
Second calamity, I was allowed a patent for a design patent a year ago, and mailed the Issue
Fee as per instructions on the form, first class mail as I have done with my last eight patents.
While talking to an assistant in the Inventors assistance center, regarding the other patent, I
asked him to check on the design patent, as you advised be patient, I was accustomed to things
being slow. He informed me it had been abandon due to non payment of the ISSUE FEE.
It seems either the Post office or the patent office had lost my issue fee payment. and time
had expired . I had mailed it a month before it was due.. The remedy, file a form explaining
why they did not receive the payment, along with a Fee of $270.00. Which they did not accept
as unavoidable ,however for a fee of $ 800.00 they may allow an explanation of unintentional
faulty mailing. Along with the $ 270. Fee I had mailed a second payment of the Issue fee. .
That`s where we are at this time, I refused to pay the $ 800.00 fee and am demanding the return
of my $ 270.00 fee and the Issue of my Patent.
The Petitions office is saying that I should have in included a post card addressed to myself
explaining what was in the Issue fee envelope, which would have been mailed back to me proving they had received the Issue payment. They can`t seem to grasp the fact that the
envelope with everything inside it was lost. What good would it have done to include a post
card describing what is enclosed in a lost envelope. ( The Inventors Assistance center agrees
with me ) Only necessary when filing a new application for a patent with multiple forms.

REMEDY ! Include wording in the ISSUE FEE form instructing it be mailed by CERTIFIED
MAIL The post office verifies the deliver of that mail , can`t say as much for the Patent office.