What does “new” mean?

Day 4:
We did some skits today, which were intended to express our thoughts and feelings about our experiences thus far at the PTO, especially the interview.

Surprisingly, all of the presentations were clever and funny. One gag that I thought was especially funny was a depiction of one of the labs attempting to understand 35 USC 101.

For those of you that don’t know, 101 lays out the conditions for patentability. It’s really a low bar to meet, as it just defines what sorts of things are patentable. But for novice examiners who don’t understand that we have to consider court rulings and precedent in addition to the simple text of the statute, it becomes a real point of contention.

Specifically, 101 says that an invention must be “new and useful.” If you try to interpret that phrase literally, you’ll end up rejecting a claim under 101 that should’ve been rejected under 102 as prior art. People see the word “new,” and they see the world “novel.” They have decent vocabularies. “New means novel,” they say. Well, not really.

Keep in mind that for our first examination we were not allowed to ask our trainers for help (as I mentioned in a previous post). This meant that people with some prior experience in patent law (or who had done some background reading) ended up teaching the people who had none. This group put it as “they taught us… like kindergarteners.” Here’s a bit of what I remember from the sketch:

Person with some prior knowledge: Can anyone tell me what “new” means?

Girl1: You mean you want us to tell you what “new” means?

Girl2: -raises her hand- Ooh! Babies are new!

Boy1: Can you patent a baby?

There were also some hilarious bits poking fun at the attorneys that came in to do “interviews” with us, as well as some jabs at the amount of paperwork we had to fill out on the first day.

The “MC” of the event was a very, very funny guy who regaled us all with jokes, impressions, and a lot of energy and enthusiasm.

My impression is that this first week was really designed to help us adjust to the temperature of the water. There are people in the class who I don’t think expected to have to understand legalese; they’re engineers for chrissakes! I can imagine that throwing everyone into examining in the first week would kill morale. Also, the PTO is hiring 1200 people a year, now. They just can’t do intense, one on one training for two weeks like they used to. At the same time, moving everything into lectures and labs could dehumanize the experience. My guess, and it is only a guess, is that the people who came up with the patent training academy took a look at the demographic they were most likely to recruit – younger people either straight out of college or only a few years out – and decided that they were going to make the transition as painless as possible. Start out with “teambuilding” exercises like you did every fall in the dorms, work your way into lectures and slowly introduce actual work.

We had our introduction to the internal academy web site, which allows us to track our schedules and progress. We can print out PowerPoint slides for the lectures. That sort of thing.

We also had our first real lecture on the basics of the patent system. Nothing revolutionary, of course… the basics like types of patents (Utility, Design, Plants), brief mentions of 37 CFR, 101, 102, 103, 112, etc. Again, it was just an intro lecture, so we didn’t go into any great detail. Our speaker had a few interesting points I’ll try to comment on this weekend, if I have time.