“Is That the Case?”

Here’s a quick “self-training” question for some of you who are more experienced examiners (and others, of course): should trainees start reading case law?

“in training” had a comment in the “Strange Application” thread, which made me think about this question:

One thing I strongly advise you to do (while you still have time), is to *learn* as much as possible from examination, rather than just trying to get cases out the door as fast as possible. Seriously *READ THE MPEP* – there are sections in that thing that are not covered in any lectures, and are quite useful in examination. Also, read case law – not nearly as important or helpful as reading the MPEP, but being familiar with court precedent allows you to formulate some arguments that you might not be aware of. Finally, skim some office actions from your primaries. This will give you an idea of how things are typically done in your art – the format of the actions, the thoroughness of the rejections, the number (and type) of restrictions done, etc.

(bold and italics added)

While I can’t disagree with most of what he had to say, I am of two minds when it comes to self-studying case law. On the one hand, “in training” is right; you can learn a lot from case law. Judicial clarification of the issues could be a real asset when trying to decide what to do with a particular rejection or allowance.

On the other hand, most new examiners – and most examiners, I believe – are not lawyers. Case law is usually relevant when the fact pattern of your application/record matches that of the decision in the case you are attempting to apply. Determining whether or not the fact patterns match (or that there are such things as fact patterns) is probably an alien process to the majority of examiners. Second, the language used is very important, and we simply aren’t trained to interpret case law. People get paid to do that and give us guidance in the form of MPEP corrections and additions. They get paid well to do that. For example, the recent CAFC ruling regarding the doctrine of equivalents might easily be interpreted by a non-lawyer to apply also to obviousness determinations. Do I know if it does or not? No. (Of course, I haven’t read the case, either.)

Third: Do you think you’ll be able to convince your trainer or SPE that you’ve properly applied case law, especially if you can’t find corroboration in the MPEP?

Finally: Doesn’t applying case law open the examiner up to all kinds of problems? You’re arguing with a lawyer about applying case law, which they are much more trained to deal with than you are. You’re also making a determination that you can’t necessarily back up with anything published by the Office. Doesn’t that make you a sitting duck in terms of quality checks?

Now, there are some cases (like Graham v. Deere) that make good sense to read, since we use the Office’s interpretation of those decisions on a daily basis. So anything that helps you understand those factors better, while still being consistent with Office policy, seems like a good idea. Otherwise, aren’t you playing with fire? If there’s a generally applicable court decision, the Office should supply guidance on how to apply it… right?



“U N I T Y…”

Today we learned about the unity of invention standard for international applications.  However, we won’t be seeing any PCT (Patent Cooperation Treaty) applications (or so we’ve been told) until after we get out of the academy, so I’m afraid this information is going to rot away by the time it is actually useful.

Let’s step back for a moment.  What is an international application?  Well, there are no international patents, but there are international applications.   The idea is that an individual or company can create an application that meets the formalities for all countries that participate in the Patent Cooperation Treaty; they don’t have to worry about the US having a different standard margin, for example, than Japan.   Applicant picks a search authority who does a search and issues an opinion about the potential patentability of the application based on the PCT standards.

Applicant has 30 months total to move from the international stage to the national stage; that is, applicant picks which countries to pursue actual patents in.  So we generally look at PCTs in two situations: when we do the PCT “examination” (it isn’t a true examination) and when we look at the national stage application that has been filed in the US from the PCT.

By way of example: I create an in international application for widget X.  I choose the US as the search authority, and an examiner does his thing with the application.  He searches, he writes his opinion concerning the patentability of the invention, etc. I take a look at the report, and I now decide where I want to spend the money to get patent protection.  So I might choose France, the US and Japan.  Now I have moved to the national stage with these three applications.  The examiners in each of the respective countries consult the preliminary findings of the first examiner, and they go through the prosecution of the applications.

But things get even more complicated, because what we do to restrict inventions in the US is different from the unity standard applied to international applications.   To give a quick (and very simplified) refresher of restrictions: an examiner can restrict, or say that an applicant is trying to claim more than one invention, if there are multiple inventions in an application and trying to deal with all of them would represent an undue burden.  So if your invention is a bunch of known things put together, that’s unlikely to happen.  But if your invention is actually a combination of a bunch of unrelated sub inventions – like my new engine with new lubricant example, then the examiner is well-served to restrict those so that the inventor or assignee will end up with two or more patents, rather than one.

The unity of invention standard is considerably different, and I’m not going to go to great lengths to get it “right.” The idea is that if all the claims share a specific technical feature (something not known in the prior art), and the claims as a whole are directed to a unified invention, the claims have unity.  So for the unity standard, my engine and lubricant claims might actually be combinable in a single application.

One can imagine that this makes things difficult for examiners both in terms of doing the job for these cases and in terms of understanding the new standards to apply.

It is all interesting nonetheless.


“A Strange Application…”

Today we had additional training on PCT applications, and some cadets had training on another non-patent literature database we can access.

I think many of us are at an awkward stage: we have learned enough basics that a lot of the information we’re seeing is somewhat repetitive from what we learned earlier. At the same time, it is easier to get lost on the newer, more advanced material. I think I sense some nervousness in much of the class as we enter the final days of our non-production time, especially since many people still haven’t finished their first Office Actions, yet.

There’s no great reason to be worried. We have time to improve and learn over the next six months in the academy. At the same time, there’s the prospect of accelerated promotions, which many people are anxious to get. With many new jobs, I think, there are a few stages that new hires go through.

  1. Excusable Incompetence. I’m new here, I’m not expected to know anything.
  2. Fear About Future Competence. I’ve been here a little while. I should be better at this. Everyone else here is good at this, why am I not?
  3. Increasing Competence (hopefully). I’m getting better at this. I remember things, I can do tasks with less supervision. I’m catching on.
  4. Competence (again, hopefully). I can do this job independently. For the most part, I know the ins and outs.

Most of us are at stage two. Maybe many people aren’t fearful, but that’s a natural reaction. After all, our trainers and other experienced examiners make it look so easy. Will we be able to work at that level? All you can do is your best; focus on learning and not asking the same questions over and over, and doing as much as you can.

Perhaps I’m overstating the case, however. Perhaps most in the class are supremely confident. Many of us have been working on applications in some form or another for a little while now, without the pressure of production, so perhaps that introduction is enough to convince most that they can do the job.

Of course, my point isn’t about the universality of fear at this particular stage in the process, but rather that I’m sure everyone goes through it. Maybe not at this particular job, but in another. It’s something to work through and acknowledge as part of the natural learning process.

And sometimes it helps to know that you’re not the only one.


“SPE All You Can SPE…”

Our day started out with a lecture about foreign patents.  Which is to say, it was a lecture about how to download foreign patents, and where to go to request foreign patent assistance.

We also had a meeting with a group of SPEs (Supervisor Patent Examiners/Supervisor Primary Examiners, depending on who you ask) who took our questions about productivity, SPE expectations, and how they see our jobs in relation to theirs.  They gave us some advice about how to plan our goals and when to get help.  Nothing revolutionary, but interesting nonetheless.

The highlight of the day, however, was our meeting with Commissioner Doll.  Keep in mind that he had canceled on us two or three times prior to this, so a lot of people were dubious that he would actually show.  He did, and he lived up to the hype of him being an engaging and entertaining speaker.  He spoke a little about quality and the efforts to increase the retention of examiners.

Of course, there’s no way to know how candid he was; I’m sure the commissioner is asked the same questions many, many times in the course of a week.  Considering we’re all new to this, I doubt anyone asked anything that would deviate from his routine.

It was a good experience nonetheless.


“So You Think You’ve Done an Office Action…”

Today we had time for large group question and answers, something akin to diversity training, the second part of  “reporting out,” and a presentation on production.

The “reporting out” series was helpful, largely because it reinforced the ideas that:

  1. You won’t be writing an office action until your trainer has ascertained that you have a solid grasp on the application and your grounds for rejection or allowance.
  2. You are capable of doing the work in a largely independent fashion, even at this stage.
  3. You are expected to know when to ask for help, and help is available to you.
  4. You are not expected to know a great deal at this stage.

In addition, the lectures give us a sort of outline form to follow when reporting our cases to our trainers.  This helps us get our work done more efficiently, and allows our trainers to concentrate on trickier areas when they arise.

The diversity lecture was very funny, as was expected.


“Rank and file…”

In another thread, someone asked about examiner reactions to the job-satisfaction rankings for federal jobs that were recently published. Initially, I just responded within the thread, but since I didn’t have anything else to post today, I thought I’d go ahead and turn it into a post.

potential examiner asked:

Hi Relativity,

Can you shed some insight on how the new examiners have reacted to the PTO’s ranking among government agencies? It is not very positive and from an outsider, it would seem like a depressing place to start a career.

Well, POPA is doing their job, and I won’t comment on their analysis of the rankings.

I haven’t heard anyone else muttering about the rankings, to be honest with you. Let’s be clear: rankings are totally irrelevant when it comes to whether or not YOU enjoy the job as an individual. Rankings are great for trying to influence change in policies, salaries, etc. Rankings are good for figuring out what employees do and don’t like about the job. But unless something is actually changed by someone, the rankings don’t mean a whole lot.

There are some people who just won’t like the job, no matter what. These are people who don’t like to write, who want hands-on engineering or lab work, or who prefer looser, non-equation based accountability for their work. This isn’t an exhaustive list, of course. And there’s nothing wrong with any of those things – the sooner they find out the job isn’t for them, the better off they probably are.

Then there is the spectrum of people who can barely stand the job, those who are content, and some who love it. Same as with any job, really.

In all fairness, I found the interview process to be very upfront. No one tried to convince me that this was the job for me – everyone involved was very clear that this is a job for some but not all.

But I can say that the PTO has a lot of benefits that other agencies don’t have, and I won’t even attempt to guess why those benefits didn’t translate into higher rankings. I’ll list a few:

  1. High pay scale. PTO pays well compared to other agencies, especially for people coming straight out of college.
  2. Bonuses. I have a lot of friends who work for the federal government in other agencies, and none of them get bonuses.
  3. Ability to become GS-14 within 5 years. Many agencies cap the number of GS-13s and 14s that they will promote. You have to wait for someone to die or retire.
  4. Overtime. A lot of agencies don’t want you doing a lot of paid overtime. Why? Because it is difficult for them to know if you’re actually being productive during that time. Since the PTO is production centered, it is easy to know if you’re living up to your end. SPEs are happy for you to work overtime, assuming you’re doing the job well.
  5. *Flexible Schedule!* Not so much during the Academy, but after you leave, your schedule becomes very, very, very flexible, as long as you’re able to work independently. I had friends in other agencies swearing to me that I was wrong about the schedule, and that *surely* you have to declare your hours for the quarter. Nope. Your time can vary by the day. Just get your 80 hours in per biweek
  6. Lots of reading, writing, and researching. For some people this is a negative. For others, it is great. It’s individual.

Please don’t mistake me for a Pollyanna. Like any job, there can be negatives, and I am not exactly a veteran employee with lots of experience on the job. But I’ll let other people speculate on those issues.

So while I’m sorry that I can’t give you a more direct answer to your question, I hope this helps.

Here’s my advice to you, for whatever it is worth: take a look at your own strengths and weaknesses, talk to people who have done the job for awhile, and ask them about the qualities that lead to success or failure in the office. Ask them about what they like and what they don’t like. Talk to people who will be in the art unit you’ll be going into to get a more accurate feel. Go ahead and attend a job fair, and/or have a conversation with the SPE who interviews you.

In my humble opinion, that kind of information is worth much, much more than any ranking chart or survey.


“Apply Yourself”

If some of you are wondering why I haven’t been posting very frequently, it is because we have moved largely into examining applications.  Some TCs have special lectures dealing with specific technologies or topics, but we aren’t doing any large lecture work.

We are not technically “on production,” yet.  At least for this next two weeks, we’re just working on applications and learning the mechanics of the job.   Sitting down and working on an application is, obviously, a lot different from just hearing about the process in lecture.  It is easy to keep little details in mind the day of the lecture and quiz, but much more difficult to recall all of that while working through an application and trying not to waste time.

Now, different labs have different levels of experience, at this point.  Some labs have placed little emphasis on progressing beyond reading and understanding one’s first application.  Others have been working on them for weeks, and have already produced office actions.  Since there is some schedule flexibility for the trainers to play with, variability is to be expected.

After two weeks, we go on something akin to production.  That is, we’ll still be spending the majority of our time working on applications, and we will be expected to show improvement as we go forward for the next six months or so.

I’ll try to update with details more frequently.  As always, thank you for reading.