“Ready… set… done!”

Compact prosecution. Another very good lecture today on how prosecution should be conducted.

The point is to put as much work as possible upfront, and present a correct first action on the merits that addresses all issues of patentability, as well as any issues that the examiner reasonably foresees.

There are good reasons to do it this way, such as the facts that it saves applicant time and money and makes a clearer file wrapper for anyone who has to take it up subsequently. Writing clear office actions that don’t assume the reader will understand your points is key.

For those of you who don’t know what an office action is, it is the Office’s official response to applicant’s application for a patent. It addresses any legal issues and informalities such as spelling errors or other errors. The way it is supposed to work is that the examiner writes a first action on the merits, and applicant either doesn’t respond and abandons the application, or responds with amendments that address the issues raised in the first action. Assuming the examiner has done a thorough and correct job, the second action should be final, and should either be a rejection or an allowance. If the examiner screws up, he/she must fix the errors.

Now, there is good motivation for an ethical examiner to follow compact prosecution guidelines: you only get one count for the first office action, and one when the case is issued or abandoned. The more correspondence necessary with applicant’s representative because you haven’t written clearly, the more time you are spending on the case without credit. It also means more time writing multiple non-final actions to address all the deficiencies in the first action.

So now that I’ve laid out some of the case for compact prosecution, how about what seems to be the alternative argument for new hires? That argument would be: “Do as many applications as you can.” Now, no one who has said this has meant “do a crappy job.” Here is the argument that I’ve heard from several different people:

You just aren’t going to get it completely right on your first few actions, no matter how much time you put into it. If you try to be a perfectionist, you’ll never get through applications fast enough. The more you do, the better you get, and so the important thing is to do as good a job as you can in as little time as you can do it, so that you get that experience.

No one is advocating putting out unreasonable office actions, of course. By doing a faster job, you somewhat increase the burden on your trainer to review your work, but you are also getting feedback faster from your trainer, which means you get to corrections faster. So this advice isn’t really contrary to compact prosecution, as it might initially seem. But the question becomes: will the trainer’s advice to fix my office action be to do what I would’ve done anyway, had I allocated myself more time?

Answer: Probably not.


9 thoughts on ““Ready… set… done!””

  1. I really like your blog; it has given me quite a bit of insight as to what my first few days at the PTO will be like. I will be starting on July 9. The legalese is somewhat discouraging at first but I suppose the academy is designed to address this issue for new hires (I hope!… I’m a comp sci masters grad. with no legal background.)

    I am curious about one thing: how much extra time (voluntary OT) are most new hires in the academy spending on a daily basis or weekends, if any, just to get work done, study for quizzes, work in teams, etc. ?

  2. Thanks for your kind comments. I’ve been trying to start writing for a more lay-audience over the past few days, especially since I do want people interested in the job to be able to get a feel for what it is like. Don’t worry, all the legal stuff is explained through lectures and exercises. No legal experience required.

    As far as VOT:

    Zero, zilch, nada. At least, that’s what you’re supposed to be doing. GS-5s and GS-7s are not allowed to work VOT at all, and there’s honestly no reason to do so.

    The first five weeks of the academy do not include very much examining time, although that can vary by lab. You will have plenty of time during the workday to work on any projects, quizzes, or exercises.

    You aren’t on production at all for the first nine weeks, and you’re only kinda/sorta on production after that for the rest of the eight months. What they’re really looking for in the first year is that you’re learning, not making the same mistakes over and over, and improving. As long as your production is trending upwards, and you aren’t sitting at your desk doing nothing, you will be fine.
    Depending on your art, you might have a lot of specialized information to learn, and the trainers are sensitive to that.

    If you are angling for an accelerated promotion, however, I wouldn’t expect to get it if you aren’t making production at or near the next level. I have heard some people who sound like they are willing to do just about anything to get that promotion, including working (illegal) VOT. And that is just short-sighted, in my opinion. Don’t take the promotion unless you can do the work within a normal 80-hour bi-week!

  3. They actually told me Academy class that no one was really allowed to work voluntary overtime while they were in the Academy. (We all knew that people that started at GS-9+ could do so, it was very, very, very strongly discouraged.)

    I would agree with you, Relativity in that if you can’t get your work done in the normal 80 hours you shouldn’t take the promotion, because what you don’t really realize until you’re at the tail end of the Academy, is that you can crank out office actions without too much of a problem… it is when the amendments start coming back and you have to do them also.

    Some amendments (even -if- you do a good to decent job the first time) can take forever to do the second action on, which as you pointed out, you don’t get a count for. So now you have to maintain your pace of first actions to get counts, but you also have to start cranking out responses to amendments which you don’t get any counts for.

  4. Yes, indeed. Take heed, take heed.

    Do that first OA right, which means prima facie, prima facie, prima facie.

    Because I’ll tell you, every rejection of every base claim that comes across my desk without setting forth how each and every claimed limitation of each and every claimed element or step is met by the PA goes right back to the examiner. No amendments. No nothing except a reminder of my right to appeal on the next OA and cites to MPEP 2144, Zurko IV, and Gartside.

    I think most of us patent prosecutors are a bit more relaxed on the dependent claims, particularly those about 4 levels down, but, by gum, any rejection of that base claim better be tight as a tick on Teddy’s tush.

    Seriously, you would be, at this stage in your career, shocked at the number of rejections entered that totally ignore half of the claimed elements/limitations.

    I just had a 1st OA in which the examiner did not even identify the PA patent being applied. Not even a patent number or name. Nor did she even say explicitly that the claim was rejected, just “Myers shows the same dooby as Claim 1.” The OA summary sheet had the claim numbers filled in the on the wee line that says “Claims rejected.” Well, hello — that ain’t a rejection. That was one of the examiners that not only did no over time in Patent Academy, she didn’t even do the under time.

    Hey, great blog. Great idea. Thanks.

    Babel Boy

  5. Just a couple thoughts on compact prosecution.

    #1 Find the best prior art.
    #2 Find the best prior art
    #3 Find the best prior art
    #4 See #1 through #3

    Seriously … if you are able to find the best price art, you should be able to narrow the issues within 1 or 2 office actions, at which point the application will either amend to get around the prior art, abandon the application, or appeal. Bad art rarely generates an abandonment and will likely cause an applicant to dig their heels in.

    Finding the best art is easier said than done. Unless you are dealing with 50 page specifications, you really should try to real the disclosure to get a feel for what the applicant invention is before you look at the claims. Most applications are written so that somewhere in the Background of the Invention (typically, at the very end) you’ll usually find a description of the problem being solved. Then, sometimes in the Summary of the Invention and sometimes in the Detailed Description the applicant will explain what they have done to solve the problem. In many instances, the applicant will have a broad concept of how to deal with the problem and a specific implementation of that broad concept.

    When you finally look at the claims, if written well, the independent claims will be directed to the broad concept, whereas the dependent claims will either be directed to the specific implementation or fluff. After doing this for awhile, you’ll get really adept at picking out dependent claims that are “fluff” versus claims that are not. When you do your search, you want to find not only the closet art that discloses the broad concept, but also the closet art that discloses the specific implementation bearing in mind the sometimes the specific implementation may not be fully claimed.

    #5 clearly explain your rationale for rejecting the claims.

    The great thing about really good 102 art is that it doesn’t need much explaining. However, for references that need a little manipulation (e.g., claim construction that heavily relies upon a “broadest” reasonable interpretation), the more explaining you need to do. If you have to explain why you think a particular limitation is disclosed by a certain teaching in a reference to your SPE, then you should also include the same explanation in your action. If you don’t, the applicant will probably not understand why you are rejecting the claim (because in the applicant’s eyes, you have not shown that the particular feature was disclosed) and instead of amending the claims, the applicant will fight.

    The quickest prosecution I see occurs when (i) the best prior art is found and (ii) a complete explanation accompanies the rejection. The applicant will be more likely to narrow claims to overcome the cited prior art if the applicant believes that new art won’t be brought to light after the amendment.

  6. Listen to Babel Boy and IP Practitioner, they know what they’re talking about. Finding the best prior art ain’t always all that easy though.

    This may be too early but here’s some advice on searching:
    1. Take advantage of the classification system, in most cases you’ll find your best art where it’s supposed to be.
    2. Combine text searches with the classification system – you’ll be able to use generally fewer, broader terms to focus on the just the inventive concepts and not the stuff that’s already well known or common in the subclass.
    3. Use Forward and Backward citations buttons (in EAST) when you find patents that are close to but not quite there in your case.
    4. Use the art your finding along the way to help you refine, improve your search terms.
    5. Don’t spin your wheels. If you’re not finding good art in a few hours you’re doing something wrong. Stop. Think about why it’s not working. Ask for help early.
    6. Use your resources in the TC (search mentors, QEM), EIC (Search Strategy Expert, NPL search, Fast and Focused search), and the front of your lab (Trainer, TA, other Examiners).
    7. Take the time now to learn what’s in your classification schedule and what’s in your subclasses by doing full classified search.
    8. Don’t wait forever to find the perfect 102 reference though. A good 103 can be better than a 102 you’re trying too hard to stretch to read on the claims.
    9. When you’re doing text searching don’t be stupid with narrow, unnecessary terms and with overly narrow proximity operators. Use “near” instead of “adj”, use “with” instead of “near”, use “same” instead of “with”. Searching abstracts and titles should be rare, search the whole document. Don’t just use “ad” when date limiting your search in EAST, use “rlad” and “prad”. Ask your Trainer what they are if you don’t know.
    10. If your not finding really good art in the original classification use text searching to find the better class/subclass and narrow your search there.

  7. A note on relying on the PTO classification system. As I understand it, the classifying has been recently automated where assignment of classes is initially based on keywords. Afterwhich the classifiers within an AU can further discern whether that case is appropriate and request a transfer =) *that’s a completely different story*

    Now if you happen to be in a relatively mechanical art you’ll find where your “cousin” AU *closely related AU* may inadvertantly get some of your cases through the keyword assignment. And if they’re easy cases, you can expect to never see them, yet that 50 claim beamoth that’s theirs which was misguided to YOUR AU unit, GOOD LUCK getting your *cousin* AU to take THAT case!!!!

    It’s not just the production that bears down on an Examiner, it’s all this other BS that’s not a justifiable part of the job.

    No human is discerning the context of the keywords such as: memory, connector, terminal, blades. Coupled with the fact that the lines within new technologies is becoming blurred. You’ve got a computing system, with a visual output (monitor), having different types of memory, and ports for peripheral devices. All within the claim language in one way or another, yet spans a miriad of classes ulitmately being assigned by a keyword algorithm !!! Look carefully at the art your examining in, then decide whether relying on the classification system will serve you or not.

  8. A couple of points:
    1) There are people that work VOT in the academy.
    2) The search strategy experts that have visited people in my lab really weren’t that helpful. If you need help the best bet is to email the designated person for your lab
    3) Maybe there are art units where classification searching is helpful. I’ve only found it helpful on a few occasions. I’ve talked to primary examiners in my AU that say they only do text searching. IMO there are too many catch-all subclasses in what’s assigned to my art unit.
    4) Some trainers/SPEs don’t like first action allowances. A necessary skill of a new examiner is making a rejection you don’t agree with.

  9. 1. You’re not allowed to work voluntary overtime.
    2. You’re required to make production.

    Both of these statements will be said next to each other with a straight face. The 2nd one is FAR more important than the 1st one.

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