“Double Trouble…”

Today presented us with two very helpful and informative learning sessions, and one inscrutable  one.

We were given hands-on introductions to some of the NPL (Non-Patent Literature) tools we have at our disposal, which are considerably more vast than I had thought.  I probably shouldn’t have been surprised, but the efforts the office has made to modernize really shine through when you learn about the EICs and how easy it is (or can be) to do research without leaving your office.

We were also given our first lecture on actually writing an office action, as well as some more detailed instructions to accomplish compact prosecution.  I think I’ve said before that this is an aspect that new examiners are really going to have a hard time accepting: you have to do the whole process.  When we learn about statutory bars and enablement rejections that can (theoretically) sink an application, it is very easy to forget that one is only a human being and therefore not only capable of, but liable to, make mistakes.  But examiners can make mistakes just like anyone else, which is one reason why applicants get attorneys with fancy degrees to prosecute their patents.  As such, you have to be prepared, especially as a beginner, to find out that what you’ve done is not as thoroughly correct as you thought it was.  Not that the lecturers don’t point this issue out; but human beings as we are, often tend to filter out unpleasant details like the implication we might make a mistake or two.

The inscrutable one: Double patenting.  Actually, I’m exaggerating.  There were some moments in the lecture that I think went clear over everyone’s heads, mostly since we haven’t yet covered restrictions.

On the other hand, I think 35 USC 121 is pretty intelligible just based on a kindergartener’s  fairness metric: don’t tell someone to do something and then punish them for doing it.  For those of you who don’t know what I’m talking about, it is possible for the office to compel applicant to separate his application into multiple applications.  The idea is that a patent ought to cover only one invention, and if you are claiming more than one you should have more than one application.  At the same time, there is a bar on double patenting, or getting two patents for the same invention.  There are exceptions, but I won’t cover them here.

So 121 tells examiners that we cannot use those divided applications against each other as prior art.  Kindergarten fairness.

Tomorrow we’ll actually cover restrictions, so that should hopefully clear up most of the lingering doubts about double patenting issues.


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