tag:blogger.com,1999:blog-5574479.post8855611548874834344..comments2024-03-28T09:05:22.006+00:00Comments on The IPKat: Can academic peer-review learn something from patent prosecution?Verónica Rodríguez Arguijohttp://www.blogger.com/profile/05763207846940036921noreply@blogger.comBlogger11125tag:blogger.com,1999:blog-5574479.post-38615009232391737462022-01-04T09:45:55.919+00:002022-01-04T09:45:55.919+00:00I am just about to start my career in the Patent p...I am just about to start my career in the Patent profession in the UK. This article speaks a lot to why I have left academia and decided to go into this profession. There are too many personal egos in science: my supervisor would regularly mention sympathetic academics and I felt that unless I play the game I would never make it far in academia. Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-80017232636253511762020-11-17T16:13:24.063+00:002020-11-17T16:13:24.063+00:00This comment has been removed by a blog administrator.alomimahttps://www.blogger.com/profile/03778090773327219509noreply@blogger.comtag:blogger.com,1999:blog-5574479.post-5731947111636924062020-09-18T09:34:52.737+01:002020-09-18T09:34:52.737+01:00MaxDrei, I can only agree...MaxDrei, I can only agree...Millipedehttps://www.blogger.com/profile/13885176361185521664noreply@blogger.comtag:blogger.com,1999:blog-5574479.post-89972016601801208362020-09-17T18:54:29.314+01:002020-09-17T18:54:29.314+01:00Rose Hughes's employer is Astra Zeneca, curren...Rose Hughes's employer is Astra Zeneca, currently busy working with the boffins at Oxford University to bring a C19 vaccine to market. Surely, Stanfield, all involved are on board with the idea that one tells the Patent Office before one tells anybody else. Keep an eye also on the CRISPR patent battles just developing, and how much disclosure there was during the American grace period before the respective patent applications were filed. I suspect there wasn't much. <br /><br />I suspect nearly all "academics" these days are well-aware of the financial consequences of not filing patent applications early. How about the perovskite story, patented by Isis Innovation (ie Oxford University)? Surprisingly big performance improvement, out of the blue, in the field of solar panel electricity generation. How much are those patents going to be worth?Max Dreihttps://www.blogger.com/profile/03338443708960801180noreply@blogger.comtag:blogger.com,1999:blog-5574479.post-35537153931685019682020-09-17T18:42:31.177+01:002020-09-17T18:42:31.177+01:00Millipede, your comment prompts me to observe that...Millipede, your comment prompts me to observe that the writer of this particular blog post, Rose Hughes is (if I understand it right) in house at Astra Zeneca. How about that then for an example of an enlightened employer? Here in this blog, Hughes writes first class items on EPO case law. She deserves high quality comment threads, I think. And her employer three cheers for giving her the freedom to contribute here.Max Dreihttps://www.blogger.com/profile/03338443708960801180noreply@blogger.comtag:blogger.com,1999:blog-5574479.post-9126065771978264252020-09-17T17:00:44.594+01:002020-09-17T17:00:44.594+01:00Well perhaps it is just me. I only ever post anony...Well perhaps it is just me. I only ever post anonymously as I don't see how the comments would benefit me professionally, but I can see how they might come back to haunt me! I've also never wanted to have a pseudonym as I don't trust it won't be traceable. <br /><br />So perhaps there are just a lot of silent readers? I expect IPKat's page view figures would have the answer there.<br /><br />Anyway this is all a off topic really.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-69840744223359363602020-09-17T15:23:47.730+01:002020-09-17T15:23:47.730+01:00All patent examiners used to be scientists too. Ev...All patent examiners used to be scientists too. Even us ex-examiners were scientists once. Some years ago I started writing an article with a patent attorney friend and colleague which we called “Publish or Perish. (Or Patent?)” It went very much along the likes of this Kat's blog. (We really must finish it one day) <br /><br />It was further intended to show that academics don’t need to perish but can publish and patent, so long as they do it in the right order.<br /><br />There are numerous examples of academics having published first, and then filed a patent application to find their earlier publication comes back to haunt them.<br /><br />Patent, then publish is the way to go - and both can be possible<br /><br />Even so there is a need to be careful.<br /><br />Many academics are not known for modesty. They will write “our observations suggested that…” “our calculations predicted that” etc….<br /><br />If they publish like this, even after filing the patent, they are saying, “it was obvious to try”, “it was obvious that we would succeed”.<br /><br />In other words the invention is obvious; not inventive, and a 3rd party could bring a revocation action and succeed!<br /><br />(Thanks to Dr Eugene Sweeney for that cautionary tale)Stanfield Clarkehttps://www.blogger.com/profile/10269000503676259749noreply@blogger.comtag:blogger.com,1999:blog-5574479.post-1594602375273368072020-09-17T14:56:31.396+01:002020-09-17T14:56:31.396+01:00Another important difference between patent prosec...Another important difference between patent prosecution and peer review is the possibility to appeal. A more or less independent review of both the arguments of the applicant/writer and the examiner/reviewer has led in the patent world to harmonization and it is debatable whether the quality of the patent prosecution process is because of the (harmonization by) codification or because of the (harmonization by) the possibility to appeal. <br />Further, I agree with MaxDrei that providing comments to blogs or other online communications should be encouraged. Indeed, in the US based blogs this is more common (but it may also become dominated by a few persons and/or become nasty, such as with the patently-O blog), although there are several US blogs (such as PatentDocs) that also receive hardly any comment. Why this is, is questionable. Are these blogs not read anymore (perhaps the younger attorneys are too busy with fee earning?) or are they being read, but are people to afraid of giving their opinion (as anonymous of 12:24 argues)? If the first is the case, the employers should realize that information gathering for their attorneys is essential to keep well aware of the ins-and-outs of the profession. If the latter is the case, employers should realize that if they want to have attorneys that are able to use arguments in their patent practice, argumenting in a polemic on a blog might be a good way to practice.Millipedehttps://www.blogger.com/profile/13885176361185521664noreply@blogger.comtag:blogger.com,1999:blog-5574479.post-110249060185267222020-09-17T12:24:51.198+01:002020-09-17T12:24:51.198+01:00A lack of time is certainly a factor, but my suspi...A lack of time is certainly a factor, but my suspicion is that the perceived benefit is too low in light of the perceived risk. You could get in a lot of trouble with an employer for saying the wrong thing in a blog comment, so whatever you say better be worth it. Mostly there's very little benefit - better to keep your clever ideas for clients and your complaints for trusted confidants. Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-62145218972835447272020-09-16T13:20:03.623+01:002020-09-16T13:20:03.623+01:00What an interesting article. Thank you, Rose.
Li...What an interesting article. Thank you, Rose.<br /><br />Like you, I find the debate with an Examining Division or TBA deeply satisfying. By contrast, I have found the peer review process somewhat frustrating. Mind you, my only experience of it (as writer) is with a piece I wrote on an aspect of patent law, for a peer-reviewed IPR journal. The reviewer was positive about my piece but then added a comment which gave me doubts whether the reviewer had grasped accurately the content of my text. But as I had no idea as to the identity of the reviewer there was no opportunity to debate the issue with them.<br /><br />Naively, I had supposed that the peer review process is not "double blind". I had supposed that the reviewer is routinely given the name of the writer. You write that "ideally" the process is double blind but (at least in the case of legal journals) is it not normal for the reviewer to be given (by the publisher) the identity of the writer? <br /><br />And then there are the patent law blogs. The ones here in Europe do not attract lively comment threads. Different in the USA. On Patently-O or Watchdog, my comments on patent law in Europe can attract lively criticism, both from commenters posting under a synonym and under their real name. Those comments are sometimes quite revealing. <br /><br />I'm (more or less) retired. I wish more patent attorneys, younger ones, would join in the comment threads. But I guess they are too busy. A shame, i think. Do they not read the blogs at all? Or do they read them but then feel they have nothing to add? Or do they want to add something but feel less than adequately qualified to do so?<br /><br />But whatever the answer is, I'm optimistic that this high quality blog is read by many professionals within the "interested circles" and therefore generally a GOOD THING.Max Dreihttps://www.blogger.com/profile/03338443708960801180noreply@blogger.comtag:blogger.com,1999:blog-5574479.post-26452723518850779832020-09-16T09:43:45.954+01:002020-09-16T09:43:45.954+01:00Neither peer review nor patent examination is with...Neither peer review nor patent examination is without flaws. As a patent attorney working closely with inventors in universities and small companies, it seems to me that some patent examiners could also benefit from a more realistic view of how the research process, and science more generally, works. It can be frustrating to face a patent examiner who has decided that they are more expert than the scientists actively working in the field of the invention. This attitude can present itself e.g. by putting absurd and unrealistic interpretations on the prior art that leave the experts baffled, insisting that terms are unclear when they are commonly used in the academic literature, and so on. The examination procedure then becomes a dialogue of the deaf with the examiner unwilling to listen to the opinion of the scientists and the scientists left bewildered or outraged by what they perceive as an inexplicable attitude or wilful misunderstanding. This happens in a minority of cases but a large enough minority to be noteworthy. In that aspect the examination procedure is perhaps worse than peer review, where for all its faults the reviewers are generally operating from the same baseline of knowledge and shared understanding of terminology as the authors.<br /><br />So by all means let us have a dialogue between the patent examination process and the peer review process. But we shouldn't assume that the lessons to be learned flow only in one direction.Dr Panglossnoreply@blogger.com