“But seriously, folks…”

We moved on to chapter 600 in the MPEP review lecture today.

We also had a lecture about how the Office is viewed from the “outside,” given by an exceptionally funny gentleman with over thirty years of patent litigation and prosecution experience.

One thing I have learned from reading comments here and on Patently-O (and other IP blogs), and also from correspondence with some of you who have thoughtfully taken time to write me,  is that it is very useful to keep in mind that attorneys have reasons for the things they do.  And “just to mess with the examiner” doesn’t make the top 10 list.

It’s foolhardy to even try to guess what those reasons are in many cases, and they don’t have any bearing on the kind of job you do with the application; but there’s a very real psychological benefit to keeping in mind that there are two sides to patent prosecution, and that all the parties involved are real, breathing human beings who have goals beyond just getting an allowance.

I have also learned that having a little refresher never hurt anyone.  Our presenter today was a wonderful example of a refresher done well.  He gave us mnemonics of (presumably) his own invention to remember various aspects of 102, and just gave us a lot to think about in terms of why attorneys craft the kinds of claims they do.   His comments on the litigation side, especially given the cases he has worked on, were also very illuminating.  We don’t get much opportunity to discuss litigation, so that was a nice change of pace.


“Manual Transmission…”

Today we started our MPEP proficiency exam courses, beginning with chapters 100-500.

One of the new ideas brought in to the Academy – I know not why – was that new examiners should take a proficiency exam at the end of their training.  This exam is similar to, if not identical with, the exam that GS-12s take before starting the program.  Unfortunately, getting a passing score on our proficiency test will not exempt us from taking the “real” exam later on.

Our lecturer did make a comment that made a lot of sense:  preparing for this exam will allow us to become familiar with the MPEP and get used to searching it for information.  Taking that a step further, I imagine that one of the most important goals of the Academy is to put out self-sufficient examiners who can do most things for themselves.  Part of self-sufficiency is being able to use the tools at your disposal to answer your own questions when possible, and being able to do that efficiently.  And while some of my fellow cadets may feel that the Academy period is too long, I also see a lot of training going on, day to day.  I don’t even mean people who just didn’t “get it.” People who have been paying attention and doing well are corrected for both small and large errors as they go along, because that is part of the learning process.  After another four and a half months, those errors should be at a minimum.  SPEs shouldn’t have to worry that we’re going to need lots of hand-holding after going through eight months at the Academy.

I hope.

Anyway, to return to our class, our lecturer spent most of the time covering test-taking strategies and stressing the importance of practice and smart preparation for the exam.  She emphasized some issues on effective filing date that can be confusing,  and went through the outline of the chapters briefly.

As usual, she was very entertaining, especially given the material she had to work with.


“Forever and Ever, Amend”

It’s almost that time; when eager-faced young examiners will fire up edan, and notice a curious number in the tab marked “Amended.” One.

After months of putting out Office Actions, soon all good little examiners will be receiving the dubious honor of their first responses from attorneys. It’s probably still a month or more away, but eventually the responses will come.

Hopefully, we’ll have paid attention to compact prosecution practice, and the responses from attorneys will either put the cases in condition for allowance or applicants will abandon their applications once faced with the awesome might that was our Application of Prior Art.

Honestly, though, we’ll probably be doing a lot of second action non-finals. Because we’re new, we don’t know our arts especially well, and we don’t have the instincts to know which art to apply when.

Today’s lecture was about what we should expect to see in responses to our office actions. Who we should expect those responses from, what they should address, and how we should respond in kind. Specifically, it is very important to determine when we can legitimately “go final,” and when we ought to go non-final in our actions.

For those who aren’t familiar with the process, the Office sends out a first office action on the merits of any particular case. Sometimes it’s a first action allowance, sometimes a non-final rejection. If we sent out a rejection, applicant or applicant’s representative needs to respond to our rejections with arguments or amendments. Examiners must, in turn, respond to those arguments or amendments. If an examiner changes the grounds for rejection (in the first action, the examiner used one piece of prior art, and in the response she uses a second), and that change was not in direct response to applicant’s amendment of a claim, the examiner must not issue a final rejection.

If, however, the examiner must apply new art to meet the claims as amended, the examiner may be able to go final. Making the wrong decision could be unfortunate for the examiner, since if applicant wins an appeal of the examiner’s decision, the examiner will have to start working on the application from scratch – without getting credit.

Since I know this will be a touchy subject for some people out there, let me be very clear that I have presented a mere fraction of the subject matter covered during the lecture today, and as always, my comments are a simplification of some of the important points. The determination of when an examiner’s office action should be final or non-final must be treated on a case by case basis, and those of us still learning must consult with our trainers or supervisors before making any determination in that regard.