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?