“Ready… set… done!”

Compact prosecution. Another very good lecture today on how prosecution should be conducted.

The point is to put as much work as possible upfront, and present a correct first action on the merits that addresses all issues of patentability, as well as any issues that the examiner reasonably foresees.

There are good reasons to do it this way, such as the facts that it saves applicant time and money and makes a clearer file wrapper for anyone who has to take it up subsequently. Writing clear office actions that don’t assume the reader will understand your points is key.

For those of you who don’t know what an office action is, it is the Office’s official response to applicant’s application for a patent. It addresses any legal issues and informalities such as spelling errors or other errors. The way it is supposed to work is that the examiner writes a first action on the merits, and applicant either doesn’t respond and abandons the application, or responds with amendments that address the issues raised in the first action. Assuming the examiner has done a thorough and correct job, the second action should be final, and should either be a rejection or an allowance. If the examiner screws up, he/she must fix the errors.

Now, there is good motivation for an ethical examiner to follow compact prosecution guidelines: you only get one count for the first office action, and one when the case is issued or abandoned. The more correspondence necessary with applicant’s representative because you haven’t written clearly, the more time you are spending on the case without credit. It also means more time writing multiple non-final actions to address all the deficiencies in the first action.

So now that I’ve laid out some of the case for compact prosecution, how about what seems to be the alternative argument for new hires? That argument would be: “Do as many applications as you can.” Now, no one who has said this has meant “do a crappy job.” Here is the argument that I’ve heard from several different people:

You just aren’t going to get it completely right on your first few actions, no matter how much time you put into it. If you try to be a perfectionist, you’ll never get through applications fast enough. The more you do, the better you get, and so the important thing is to do as good a job as you can in as little time as you can do it, so that you get that experience.

No one is advocating putting out unreasonable office actions, of course. By doing a faster job, you somewhat increase the burden on your trainer to review your work, but you are also getting feedback faster from your trainer, which means you get to corrections faster. So this advice isn’t really contrary to compact prosecution, as it might initially seem. But the question becomes: will the trainer’s advice to fix my office action be to do what I would’ve done anyway, had I allocated myself more time?

Answer: Probably not.


“Connect the dots…”

We had two superb lectures today that were superb for different reasons.

The first lecture concerned going from first seeing a case sitting in your docket up to the search.  Not that we haven’t been presented with how to do an inventor search, or how to check the IFW for completeness, or all sorts of other little things.  But we hadn’t yet learned when to use all these little things, nor had we seen them put together in a complete package or checklist fashion so that we could do all the necessary prep-work that must be done before one starts searching.

While this might seem a little silly, picture going through a computer-building 101 style course, wherein you learn what a video card is, what a hard drive is, what a processor is, what memory does, etc.  But the whole point of the class is to actually assemble a computer.  So sure, you have to know what all the parts are, and you’re glad to know it.  Four or five weeks into the course, however, you start looking down the horizon and you realize that sooner or later, someone’s going to actually ask you to put some of these things together and ship them off to a customer somewhere.  You start wondering: “But… how do I actually use all of this information? What do I put in first, the hard drive or the memory? How do I make sure it’s all right?”

And really, the answers to some of those questions might be “it doesn’t matter,” but you still want them answered.  You want a process you can follow to get from point A to point B.  That is what this lecture provided.  Our lecturer laid everything out into a series of steps that were logically connected, and which also had good safety bounds so that you would have a good idea when to stop and ask for help.   Even when you have a lot of leeway on production, like we do right now, you don’t want to take any longer than necessary to do a good, complete job.  Doing things out of order, or missing show-stoppers that you could’ve found in an hour instead of in four really make it really difficult to be efficient.

The second lecture was 103 part 2, which gave us some practical examples of showing a combination as well as introduced us to 103(c).  And while I appreciated the practical examples greatly, I think one of the best things that came out of the lecture was that many of us learned what we didn’t know about 102, and about claim limitations.  Some of it we had definitely gone over in earlier lectures, but “out of sight, out of mind.”  If you don’t refresh that information periodically, it is very easy to forget it.  Some of it I don’t think we really covered with the level of depth that our lecturer was expecting.  So, luckily, he asks us questions and is therefore able to gauge how much we know.

And I’d much rather  figure that out now, than waiting until later.


Non-IP person translation of key terms:

inventor search: checking to see what other applications the inventor has filed or what patents he has been granted.

IFW: Image File Wrapper.  This is the electronic “folder” of information that gets scanned in from the paper or electronic application.  There can be errors in scanning or filing, so you have to check that everything is there.


“I feel so restricted” or “What a burden!”

Today was restrictions. Do you have more than one invention in the application? Does examining those multiple inventions constitute an undue burden on the examiner?

So, of course, we have a bunch of decision trees to follow to figure out if something may be restricted or not, which are too numerous for me to go into now. The analysis is sufficiently daunting that I don’t think most of us will even attempt a restriction unless necessity compels us to.

I’ve been told by a few folks that I should break things down into plainer language so that people who are interested in the job, or interested in patents but have no training, can more easily grasp what I’m getting at. So I’ll take a first stab here:

When an examiner receives an application, there can be all sorts of things in the specification that aren’t claimed – that is, that applicant doesn’t want legal protection for. Applicant can write about tables, alarm clocks, and microchips in the specification and only actually ask for a monopoly on the alarm clock in the claims. Sometimes, however, applicant writes claims that have multiple inventions in them. So basically, with a single application, applicant is asking you to search for prior art and make a determination about patentability for two different things. They might not even be in the same art. For example, a new engine that uses a new lubricant. The examiner would really have to treat the lubricant and the engine as separate inventions to get the job done, depending on how they’re claimed.

So if that represents an “undue burden,” that is, the examiner is going to have to do much, much more work than usual as a result of this, he can see if the claims meet the requirements to do a restriction. The restriction asks applicant to turn these claims into separate applications, or to pick one invention and go with it. It can be a useful tool if used properly.


“Double Trouble…”

Today presented us with two very helpful and informative learning sessions, and one inscrutable  one.

We were given hands-on introductions to some of the NPL (Non-Patent Literature) tools we have at our disposal, which are considerably more vast than I had thought.  I probably shouldn’t have been surprised, but the efforts the office has made to modernize really shine through when you learn about the EICs and how easy it is (or can be) to do research without leaving your office.

We were also given our first lecture on actually writing an office action, as well as some more detailed instructions to accomplish compact prosecution.  I think I’ve said before that this is an aspect that new examiners are really going to have a hard time accepting: you have to do the whole process.  When we learn about statutory bars and enablement rejections that can (theoretically) sink an application, it is very easy to forget that one is only a human being and therefore not only capable of, but liable to, make mistakes.  But examiners can make mistakes just like anyone else, which is one reason why applicants get attorneys with fancy degrees to prosecute their patents.  As such, you have to be prepared, especially as a beginner, to find out that what you’ve done is not as thoroughly correct as you thought it was.  Not that the lecturers don’t point this issue out; but human beings as we are, often tend to filter out unpleasant details like the implication we might make a mistake or two.

The inscrutable one: Double patenting.  Actually, I’m exaggerating.  There were some moments in the lecture that I think went clear over everyone’s heads, mostly since we haven’t yet covered restrictions.

On the other hand, I think 35 USC 121 is pretty intelligible just based on a kindergartener’s  fairness metric: don’t tell someone to do something and then punish them for doing it.  For those of you who don’t know what I’m talking about, it is possible for the office to compel applicant to separate his application into multiple applications.  The idea is that a patent ought to cover only one invention, and if you are claiming more than one you should have more than one application.  At the same time, there is a bar on double patenting, or getting two patents for the same invention.  There are exceptions, but I won’t cover them here.

So 121 tells examiners that we cannot use those divided applications against each other as prior art.  Kindergarten fairness.

Tomorrow we’ll actually cover restrictions, so that should hopefully clear up most of the lingering doubts about double patenting issues.


“But I thought we never used 101…”

Today was 101 day.

I’m not kidding.

We had two lectures as well as exercises and legal readings on what kinds of claims do and do not appear to be statutory. We had good clarification of what kinds of claims are judicial exceptions, what kinds are not, and what preempting a judicial exception is. Somehow, throughout the entire lecture, I could actually hear attorneys howling with pain.

We had some interesting examples for the “concrete” criterion, but I won’t use them.  As my own example, without reference to potential patentability,  choosing beauty contest winners by choosing the most beautiful girl isn’t very concrete. That is, the result isn’t repeatable.  Photographing faces of contestants, projecting their faces onto a grid, measuring the symmetry of their faces, and choosing as the winner the contestant with highest measured symmetry, is a repeatable process.  Again, these examples are mine, warts and all.

Our lecturer pointed out in the morning that the example answers for signals might have to be revised by the afternoon, since a verdict on that issue is pending.

We discussed transformation of matter, and that printing on a page without modifying the substrate is not considered a transformation that matter.  Note: that doesn’t mean that it isn’t statutory.  It just means that it doesn’t fall into the category of “transformation of matter.”  Storing things in computer memory is also not a transformation of the matter of the computer memory.

We also talked about real-world results, and a bunch of other things I’m sure I’m omitting. I’ll have to go back through my notes to see what else was covered.

Also – I noticed Kim Examiner pointed out that the current group of cadets is going at a “glacial pace” in a comment on the Patently-O blog. Yes, Ms. Examiner, some days go pretty slow. There’s definitely a middle ground somewhere between two weeks of training and eight months. But I did want to set the record straight for anyone who thinks that we’re just doing lectures for eight months – we start doing actual examining at around two months in. After that, our lectures are all MPEP related, and take up much less of our time.

Oh, and Kim? May I call you Kim? Thanks for calling me cute.

(“Bismark, you won’t believe what happened to me on the PatentlyAcademic blog today…”)


“Thanks, Patently-O”

Well, I’ve been linked to from Patently-O, so I’ve suddenly found a bunch of comments in my queue.  Thanks to everyone who has responded so far!

I’ll do my best to try to respond to everyone who asks a question:

 Step back asks:

A couple of questions from your early-adaptor readers out here:

1. What do you think (in general of course) about your teachers at the Academy? Do they seem fair and balanced regarding the rights of inventors versus the rights of the public? Do they talk public policy? Do they teach you how to read court cases involving patents or do they say leave that to the solicitor’s office and follow along only in the MPEP? Do they teach you how to read patent apps when you start a search? If so, what do you read first? The Abstract? The Summary? Claim 1? Figure 3?

2. What do you think (in general of course) about your fellow cadets at the Academy? Do they seem fair and balanced regarding the rights of inventors versus the rights of the public? The “battle” between examiners and patent attorneys/agents/pro se inventors? Do they talk public policy? Do any of them know how to read court cases involving patents? Are they all ex-engineers or a mix from different fields (i.e. ex biotech lab rats)?

3. What do you think about some of the patent blog sites out here in the wild? i.e. Patently-O, etc. Are any of them helpful to cadets for getting a kick start into the wonderful world of patents?

With regard to 1:  I think we have some exceptional teachers at the Academy.  There have been very, very few lectures that I’ve left thinking that they were a waste of my time.  The enthusiasm many of them have is infectious, and as I’ve said before, it really helps to alleviate some of the anxiety about morale at the PTO when you see people who very clearly are interested in what they do despite having been there for fifteen or more years.  In terms of being fair and balanced regarding the rights of the inventors, we are taught (and it is repeated over and over again) that the presumption is in favor of the applicant, and the examiner must present a bona fide prima facie case for any rejection.  We haven’t gotten to the point of reading court cases, although we have been gently encouraged to do so.  I’m sure they don’t want to scare anyone away with too much legalese, at this point.   We’re also encouraged to look through the MPEP for information, at this point.

Obviously, since the PTO is a part of the administrative branch, we don’t get to decide the laws.  There are office policies with regard to how to interpret certain court decisions or certain language in a claim, which we are required to follow until given congressional or judicial guidance to the contrary.  So we’re expected to know and use those policies.  A lot of students have no IP background at all, so there is some discussion of the reasoning behind certain policies and court decisions.  I have never heard a question answered with “that’s just how we do it here.”

We’ve had some guidance in terms of claims analysis and reading patent applications.  In terms of how to read the app, there are various methodologies, and I haven’t heard anyone really trying to cram one particular one down anyone’s throat yet.  A couple of the lecturers have said that they start with the drawings or claims first, but they’ve never given any approach as a rule.

2.  Many of my fellow students are fresh out of college.  Some have just finished MSs.  A good number of them have had a job or two before the PTO.  I’ve met a couple of attorneys who decided that this might be a good career path.  We have nine “labs” of students, each in their own area, so there’s a very good mix of knowledgeable people.  I’m not sure what many of them think with regard to the rights of inventors and the public – some of them probably haven’t given the issue much thought, to be honest.  I haven’t yet met any zealots.  The attorneys definitely know how to read the court cases, ftr.

3.  I’ve read some Patently-O, but I’ve read just about every single post on the Just ‘n’  Examiner blog, and every post in the intelproplaw.com “Working for the USPTO” thread.   Some of the material I was reading before I started was way too advanced for me, but a lot of it did help me realize my interest in law and that I might be a good fit for the job.  It definitely helps to have a good idea of what the job is going to be before coming in.  I know there are some people who have had rude awakenings already.

Anon pointed out that we should be spending even more time on search strategies and that Classification Insight is a very helpful tool.  You’re absolutely right, and we did go over that.  Keep in mind that we’ll start a kinder, softer version of production fairly soon, and will be devoting a lot of time to applying search strategies and building up those skills.


“The Search Continues…”

I said it before, I’ll say it again: Meat and Potatoes.

We talked about search strategies today.  Let me step back for a moment and clarify – when I say we did X today, I don’t mean the entire day.  I mean that we had a lecture on it.  So if any potential examiners are reading this and thinking “you spent the whole day talking about search strategies?”, the answer is “No.”  In any given day we might have between one and four lectures, plus one or more quizzes, plus exercises.

Anyway, back to search strategies.  I’m pretty impressed by the wide array of search tools available to examiners now, and somewhat amazed about how difficult things must’ve been even a few years ago.  In addition to EAST and WEST, we have access to a large number of non-patent literature databases as well as “special search help” as available.   There are quite a few options for beginning a search. We got lots of helpful hints for refining our searches and making them more targeted.  But we haven’t yet gotten guidance on how to end the search when it isn’t fruitful.  At some point, you just have to say “Gee, guess nothing does teach these claims, or motivate combination.”  And lets be honest here… one has to be mindful of production.  You have to know when enough is enough.

At the same time, you should know your freakin’ art.  A lot of questions people seem to be having would be eliminated if they thought for a moment about what searching really means.  It means that the invention you are examining didn’t come from God’s lips to the inventor’s ear, most likely.  Inventions are almost always combinations of old things put together.  That’s the nature of invention.  New uses for old things.  But that invention fits within a category, a class, and it should be a class with which you have some familiarity.  That familiarity, along with the classification listing, along with broader searching techniques, ought to be able to guide you to some narrow sets of possible art that will spur you on to finding better art.  It should give you a sense of whether or not the invention is brand spankin’ new or just kinda new.  No, those aren’t legal terms.

And then there’s reading the claims (properly) as broadly as they can be construed in light of the specification, and thinking about things in a clever way.  You probably can’t be taught that.

We had some 103 exercises this morning that had some very clever answers from whoever wrote them up.  Of course, there’s a danger with giving those kinds of clever answers to students.  First, they might mistakenly think that they, too, are that clever.  Second, they might think that they’re not, and that maybe they’re not quite clever enough to do the job.

But that’s all I have to say about that.


“Well, Obviously…”

Today was our 103 introduction, which was quicker than scheduled and pretty interesting.

There was a lot of emphasis placed on the difference between technical obviousness and legal obviousness.  You must, as an examiner, make a good case for your obviousness rejection.  You also can’t use the benefit of hindsight; that is, you can’t read the application back into the references you’re citing if there’s no real motivation to do so.  At the same time, you don’t have to have an explicit motivation to combine in the prior art.  We’ll obviously get more training that will address the clarification of Graham v Deere via KSR.  But not yet.

It seems like one of the trickiest things will be reading the claims in the broadest light possible with respect to the specifications; we’ll have to learn to treat commonly used expressions and terms in a way that is more general than we ordinarily would mean them to be.  That can be tough.

We also had a very funny presentation about leave, comp time, overtime, and work schedules.  If you’re thinking about becoming an examiner, consider this: with the IFP (Increased Flex Plan, I believe) you can basically work any 80 hours in a biweek.  You don’ t have to set a schedule beforehand.  You can work Saturdays, if you want to.  You can work up to 12 hours a day or just not come in at all on a day that is inconvenient.  You can leave in the middle of the day, do what you need to do, and come back at 8pm that night.

That is what I call “flexibility.”  Most jobs that offer flexible schedules require core hours every day, or at least require you to declare when you’re going to work up front.  Not so, here.  Of course, most jobs don’t also have production requirements like the PTO does.  But life is about trade-offs.


“Prior Art? like Picasso?”

Today was the start of week four.

Today was also our first real 102 lecture, featuring such interesting topics as 102 a,b, and e.

If you can reject on a, b, or e, reject on b.

If you can reject on a or e, reject on e.

If you can reject on a, well, ok.

For those of you unfamiliar with 102, it’s the statute that determines what constitutes “prior art.” That is, what sort of publications or previous inventions make a prima facie case that the inventor didn’t invent what he described in his application? I’m going to have to go back over the lecture notes, because we had a … snafu with the lecturer’s schedule, so we had a very rushed introduction. Luckily, we do get copies of the power point.

For potential new hires, this is the important stuff. 102 and 103 are (in my unexperienced opinion) the meat and potatoes of examination. Occasionally you are going to see a perpetual motion machine, or claim language that is incorrect or not enabled in the specification. But where you’re really going to spend your time is in the search, and in determining whether several patents would motivate a PHOSITA to combine them.

To that end, we also had an EAST introduction today, which is the search tool used most widely in the office, overall. It’s actually pretty neat the way they let you combine searches and increase complexity with the query language. It almost seems fun!