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A CASE STUDY OF INOPERABLE INVENTIONS: WHY IS THE USPTO PATENTING PSEUDOSCIENCE? - page 17 / 39

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2006:1275

Inoperable Inventions

1291

A p r i m a f a c i e c a s e f o r i n o p e r a b i l i t y i s , o f c o u r s e , r e b u t t a b l e b y t h Once the prima facie case is made by the USPTO, the e applicant.135

burden of persuasion shifts to the applicant.136 The applicant must then “provide rebuttable evidence sufficient to convince . . . a person [of ordinary skill in the art] of the invention’s asserted utility.” 137

III. LAW-IN-ACTION ANALYSIS OF THE PATENTING PROCEDURE

A. The USPTO Lacks Sufficient Institutional Expertise

The actual work of examining a patent application at the USPTO occurs in one of eight different technology centers under the direction of the Deputy Commissioner for Patent Operations.138 Each technology center devotes its efforts to examining patent applications in a particular field of specialization.139 Thus, the USPTO increases the overall level of expertise by compartmentalizing expert examiners within a particular subfield.

A person applying to become a patent examiner must have an undergraduate degree related to the field in which the examiner wishes to practice and, at a minimum, twenty-four credit hours of course work in that field.140 For example, to be an examiner in the field of physics, one must have studied at least twenty-four credit hours of undergraduate physics, including at least two of the following classes: electromagnetism, thermodynamics, optics, modern physics, and acoustics.141 Although this level of educational background is hopelessly inadequate for a thorough understanding of many of the complex patent applications seen in recent years,142 it is hardly fair to criticize the USPTO too harshly in this regard.

135. 136. 137.

In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Id.; In re Brana, 51 F.3d 1560, 1566 (Fed. Cir. 1995). In re Brana, 51 F.3d at 1566 (citing In re Bundy, 642 F.2d 430, 433

(C.C.P.A. 1981)).

138. Operations

U.S. Patent & Trademark Office, Deputy Commissioner for Patent , http://www.uspto.gov/web/offices/pac/dacp/peg (last visited Nov. 1,

2006). 139. 140.

Id. U.S. Patent & Trademark Office, Patent Examiner Qualifications,

141. study—that

Id. The USPTO website uses archaic language to describe these fields of is, electricity and magnetism, heat, light mechanics, modern physics, and

sound. Id. 142.

See, e.g., infra Part IV.D.

visited

http://www.uspto.gov/web/offices/ac/ahrpa/ohr/jobs/qualifications.htm Nov. 1, 2006).

(last

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