Announcement (Also Part Deux)

I mentioned this in my previous post, but obviously I need to check my email more often.  I got a nice note asking me to post this full announcement up, and I’m happy to oblige.

USPTO Webcast on New Claims and Continuations Rules Thursday, August 23rd

Date:   Thursday, August 23, 2007

Time:   1:00 p.m. (EST)


The U.S. Patent and Trademark Office (USPTO) will hold a special webinar on Thursday, August 23, 2007, at 1:00 p.m. (EST) on new claims and continuations rules that will allow the agency to continue to make the patent examination process more effective and efficient by encouraging applicants to use greater clarity and precision in describing the scope of their inventions.  The new rules will be published in the Federal Register available at  after noon on August 21, and will be effective on November 1, 2007.

During this live, two-hour webcast, USPTO officials will explain the new rules and answer questions.  The presentation and audio for this event will be streamed over the Internet.  All participants need is a computer with an Internet connection, sound card, speakers and the ability to view Windows Media presentations.

To register for this free webcast, click on the following link:

An advance copy of the presentation will be made available to registrants prior to the event.

If you would like to receive regular updates from USPTO on its eCommerce initiatives, please register by clicking on the link below:

“On Restriction…” Part Deux

Today we had part two of our restriction training. Those in the chemical arts are all too familiar with restrictions, by now.

This was a very detailed lecture, and it would be impossible for me to summarize it in the time I have.

Much of it was reviewing what we covered in the first part. There are some arts in which examiners do very few restrictions, even when there are many claims. So this lecture fleshed out some of the details for those examiners who have done little or no restriction practice as of yet.

We heard about rejoinders. No, rejoinders aren’t witty retorts. When an examiner makes a restriction requirement, applicant or applicant’s representative elects which set of claims he or she wants to have examined now. So now we have “elected” and “nonelected” inventions. But the nonelected claims might depend from the elected claims. So what happens if the elected claims are allowable? Well, the dependent nonelected claims should be compliant with 102 and 103, assuming they are proper dependent claims.   So the nonelected claims are brought back in and examined.

We also went through a laundry list of combination/subcombination stuff, linking claims, genus and species, and more. I’ll try to post more on restrictions when I get a chance.

Also, an important note: On Thursday, August 23rd, at 1:00 p.m. EDT there will be a webinar on the new changes to the rules on continuations and claims. You can go to the USPTO website and register for the event from there.


“That’s Classified…”

We had the second part of classification today.

Part of an examiner’s job when first looking at an application is to figure out whether or not she should even be working on it. All applications come into the office and are pre-classified, mostly based on keywords, and are shuttled off to wherever seems appropriate. As a result, there are some near misses. Applications usually get into the right Technology Center. It isn’t rare, however, for them to fall into the wrong art unit.

So why should an examiner look at the classification on her applications carefully? Well, working on something outside of your specialty means that you’ll probably be less efficient, for one. Especially during training, working on applications in your class gives you valuable experience; working on applications outside your class only gives you experience in realizing too late that you screwed up.

Finally, the examiner must classify the invention when it is time to allow it. This is essential so that the rest of us can do classification searches (searching for only things that belong in a certain category), and as an initial hint to what the invention is before we even read the abstract or spec.

Our lecture today covered some of the international standards as well as giving a refresher on US practices.

We also had a lecture on TSP and FERS, which was very helpful.