JPE has an interesting post about how examiners are really trained… via the attorneys and agents who respond to our office actions. I don’t have quite as much to say on the matter as JPE does, but I figured I would contribute my little bit of experience to the discussion.
The first thing I want to address, however, is JPE’s suggestion that the burdens of the production system cause quality to go down. I’m not sure this is necessarily the case. To a large extent, it depends on the trainers we initially have and the feedback we get during the training process. For some students in the Academy, this is the most in-depth and detailed analysis of their Office Actions that they will ever receive from a supervisor. Other trainers really only look for formal matters and leave the “training” to the attorneys. Because lectures are addressed to students in all arts, we tend to learn the material in the abstract. While we were given some exercises specific to our arts, we have to learn to apply what we’ve learned through writing real Office Actions. So I’m not sure that its necessarily the production system per se that makes doing quality work difficult; it’s trying to figure out how to apply all this stuff to claims and limitations that are quite unlike what we’ve seen in lecture.
In general, I would say that students judge the quality of their actions (or lack thereof) by a few different standards:
- What does your trainer or TA say about it?
- What does the MPEP say about it? Alternatively, what did your trainer or TA tell you the MPEP says about it?
- Did applicant amend substantially, or did he just change a few words?
- What is the “tone” of the response?
I’ll just say a few words about the last one, tone. Some responses are very – shall we say – firm about the job the examiner has done. Many new examiners are easily worried by the arguments they receive from attorneys, and if the tone is harsh (even if complying with Rule 3), they question whether or not their actions are reasonable. But there’s a problem: the examiner in training will then take that application to someone else (trainer, TA, primary, SPE, etc) who may then tell the examiner that the attorney’s arguments are incorrect. If the other examiner’s analysis seems reasonable, the new examiner now feels as though he has been bullied. So now, he’s less likely to respond to that severe tone when he comes across it in the future.
Good examiners welcome good arguments, of course. It helps us to do our jobs better, and sometimes teaches us to never do something the way we did it before. Unnecessarily combative arguments can often have the reverse of the desired effect.
I don’t mean to imply that such replies are common or predominant. They represent a small percentage of the replies I receive. And while the right answer is to always treat each application on its merits, and to do the most legally correct job possible, it is also true that examiners are only human.
4 thoughts on “Re: Who Trains Whom?”
“…it is also true that examiners are only human.”
And it’s true that inventors, applicants and practitioners are too.
That is certainly true, and something to keep in mind during prosecution. Everyone has hopes and dreams, business interests and requirements to keep their jobs. And emotion and fallibility.
“The first thing I want to address, however, is JPE’s suggestion that the burdens of the production system cause quality to go down. I’m not sure this is necessarily the case.”
I hope you can still say that 3 years from now, but I bet you’ll think differently. I know my quality has dropped off with the added production requirement that came with my last promotion. I don’t want that to happen, but it does. The production system is really out of whack. If I take the time to do a thorough job on one tough case, it throws the whole bi-week off. The only way out is lots of voluntary overtime, or learn to cut corners. Most examiners do some of both.
I should clarify that I’m referring to students fresh out of the academy, not more senior people who have higher production requirements.