“The Name of the Game…”

Is in the claims!

Yes, we had that famous lecture today.  It was pretty entertaining, although I did feel like I should have run out of the auditorium pumping my fists, Tony Robbins-style.

I almost entitled this post “Do you understand the words that are coming out of my mouth?”  Because really, that’s what it boils down to – do you understand the specification? Do you understand what the invention is supposed to be?  Do you understand what all the words themselves mean, and are you sure that there’s no other way that they can be understood?  Do you understand the claims?  Do the claims make sense in light of the spec?

I actually got into a discussion with another junior examiner the other day about how well we have to understand the invention.  He seemed to think that you really “only” need to understand the invention sufficiently to find prior art.  But how can you find prior art if you don’t understand the invention well?  Maybe I’m wrong, but the goal shouldn’t be to issue a rejection based on any old prior art that is half-way related.   The goal is to find good prior art that reads on the claims, find some other objection or rejections if there are any, or allow the claims if they are allowable.  But you just can’t make that determination unless you’ve really invested some time and thought into understanding the document in front of you.

We also took a look at some of the automation tools, including the form paragraphs tool and our electronic docket system.  We only did some very, very basic stuff with it.  They want us to get little pieces of all the tools at first, so we get used to them, and then give us more complete guidance later.


4 thoughts on ““The Name of the Game…””

  1. Hi,

    I enjoy reading your blog. I am looking forward to starting my identical blog. I will be starting the Academy soon. I have a few questions I would like to ask you. It seems that you have been there a long time now. What are you presently doing in the Academy? What I mean is this, are you just sitting there for 9-8 hours for lectures????

    Is there an opportunity to work overtime while in the initial phases of the Academy?

    You are talking about taking the proficiency exam, has the question been brought up about people who have already passed the patent bar? Would these people still have to take the proficiency exam?

    Are there any people in your class who already passed the patent bar??

    Are there any lawyers in your class??


  2. Right now, we mostly examine cases. We definitely don’t sit for lectures eight or nine hours per day. With one or two exceptions, I have noted every lecture that we’ve taken, and classes vary in length from one hour to two and a half.

    Individual labs have extra classes and learning sessions depending on what art you are in.

    At least for our class, there was no such opportunity for overtime. It would be hard to imagine what you could do to earn more money at that point, since you don’t examine cases in the initial phases of the Academy. Also, the rules for overtime are in flux; it is unclear whether or by what standard it will be determined that we will be allowed to work it.

    As far as people who have already I have not heard the question come up. There are people with JDs, but as far as I know, none of them have taken the exam. If you already have passed the patent bar, the Academy is going to be ridiculously easy for you.

  3. Yes, I passed the patent bar, but that was 3 years ago. So, it will all be new to me again. What do you mean by “examine cases?”

    I know it sounds funny, but I am just curious.

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