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.
2 thoughts on ““But seriously, folks…””
When the presenter spoke of his Patent Bar review program and mnemonics, I was reminded of Alex Wellen’s description of those sessions in _Barman_ (a book that made me want to punch the author in the face). Other than that, the presentation was indeed enjoyable.
“[T]here’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.”
Relativity, it’s truly remarkable that you’ve figured this out in a relatively short time at the PTO. There are lots of people there, including most of management, particularly those who wrote the new rules, who have never figured this out, and never will.
And I wouldn’t say that “just to mess with the examiner” doesn’t make the top 10. Depends on the examiner. (I’m kidding, so all of you who monitor this site and can’t comprehend humor and/or sarcasm, please relax and and refrain from going straight to JPE’s site to post that “JD, hmm, who do we know with those initials, says that he does things just to mess with the examiners.” It’s a joke.)