“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.


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