Q&A with former patent examiner Tara Ho on innovation
Tara Ho is 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.
