Patently Academic

Today we had a class on interview practice and one on allowances. The interview class was partially repetition, since we have covered interviews to some extent in prior lectures, and because many people have already conducted interviews by now.

Our class on allowances covered the procedure for checking that a case was in condition for allowance in terms of formalities and in terms of interference. As I’ve covered before, objections point out a conflict with a rule or a formal matter with the application. A title that isn’t descriptive, for example, or an abstract that is too long. Rejections indicate conflicts with the patent laws themselves. There are cases where an application conflicts with none of the statutes (it is enabled etc under 112, falls into a statutory category and does not otherwise conflict with 101, has no prior art under 102 or 103 that could be used against it, etc) but has some formal issues. Some of these can be taken care of by an examiner’s amendment to the application, and some of them must be taken care of by the applicant or applicant’s representative.

We also covered good practice in terms of writing reasons for allowance and making the record (including search histories) clear. Examiners often write up an explanation of why the application was allowed, called the “reasons for allowance”. This is important because it is the final opportunity for the examiner to explain on the record what distinguishes the invention from the prior art. After all, it is unlikely there is nothing anywhere even similar to what is claimed. So the examiner should explain what feature or features make the instant application different from what is known in the art. In first action allowances, reasons for allowance are the only real prosecution history there is, so the examiner should clearly set forth his or her reasons for going straight to allowance. And of course, it is improper for an examiner to narrow the scope of the claims in the reasons for allowance; that is, examiners don’t get to make claims mean what we’d like them to mean just so they can get pushed out the door.

We also briefly went over making our search histories complete, which may be a somewhat neglected art. That is, while examiners often do thorough searches, if those searches aren’t detailed in the search history, there is no record of them for the public or the courts to refer to. EAST and WEST make it easy to supply this history when searching the patent databases, but it can be more difficult when searching non-patent literature to keep an accurate record of the search performed.

Finally, we discussed interferences briefly. I’ll put off that topic until we have our lecture on it, tomorrow.

~Relativity

We had 2100B today, same format as 2100A.

I don’t know (and am too lazy to check) if the notes we use are available to those outside the PTO, but we have what amounts to a highly condensed MPEP that we use to provide us with the “highlights” for the certification exam.  An examiner prepared these notes, chapter by chapter, when he was studying for the sig test.  They’re great notes, and they usually do hit the salient points well.

I’m not so sure how well they transfer to a lecture format, but they are very helpful to get a quick overview of a chapter in the MPEP, and to get familiar with what can be found in each chapter.

~Relativity

We had our 2100A overview today, which was short and to the point.  Each lab had to confer and answer a set of practice questions, and then pick a spokesperson to read and explain the answer to the class.

As everyone knows by now, the new rules are enjoined and examiners are obliged to continue examining applications tomorrow as though there were no new rules.   There was lots of groaning from people with applications on their dockets with more than 5/25, but that is to be expected.  I’m very curious to see how this whole thing turns out…

~Relativity

We had a repeat of the OPQA lecture, so nothing to say about that.

We also had another MPEP class, which included coverage of protests to pending applications. Hint: they aren’t very useful, since you’d have to protest before publication or allowance, whichever comes first. But we had a good presenter who always seems invested in making sure we understand the material.

~Relativity

We had initial training on the “New Rules” today, which was largely just an overview of what most people seem to already know.  We’ll have more practical training in the future, it seems.

We also got our initial eRed folder training, which is interesting.  If you’ve never been an examiner, then you might not know that examiners prepare file folders with the documents that are to be sent off to the LIE to get counted and mailed.  These folders are red in the TC, and green in the Academy.  The left side contains documents that are scanned but not mailed (internal information), and the right side contains everything that will be sent off to applicant or applicant’s representative.

Those people who are hotelling have still had to (as far as I know) assemble their folders at home and bring them in for counting during their one hour on campus.  In short, despite all the automation tools the office has supplied us with, they are still tethered to paper and the minor nuisance of hauling folders back and forth between home and work.

While that may not seem like an important point, it is one step closer to allowing examination to be done entirely through telecommuting, and opening up positions to people all over the country.  Being able to send your eRed folder to your SPE to be signed or returned with corrections means that hoteling may be an option to even those without partial signatory authority.  GS-11s may be able to work from home.  This is my own speculation, by the way, not anything I heard during training.

I have mixed feelings about this process; while I would love the freedom to be able to work from home, I have also heard others discussing the possible ramifications to examiners’ salaries if the demand for positions was to suddenly go up.

If nothing else, I like that I can now have PDFs of every document I put into the file wrapper for local storage.  Believe it or not, I think that’s even better than bookmarks.

~Relativity

I worked way too hard to come up with the lame title for the last MPEP class, only to have someone think it was hate speech.  So I’m giving up the ghost, as they say, and not trying at all this time.

We had the second part of our chapter 800, 1200, and 1300 class this morning, which consisted of going over the answers to the questions we received on Tuesday.  Yes, I skipped posting on Tuesday.  No particular reason.

What’s most interesting, to me, is seeing the discrepancy between a) what examiners actually need to know to do the job, day to day, versus what is tested and b) the level of knowledge trainees (myself included) think  they have versus the more detailed information we’re having to look at for the MPEP courses.

It’s good, if not a tad discouraging.  Our presenter for the 131 affidavit course made the point that these classes are designed to give us a framework upon which to work; when we come across something that doesn’t fit into the framework as we understand it, it means that either we have erred in our initial understanding, or that the issue is more nuanced and we must build on our earlier knowledge.  I’m paraphrasing horribly, but the point remains intact: these classes expose us to a large amount of the possible knowledge that is out there, and it is probably up to us to fill in the rest.

~Relativity

Today we had an entire class devoted to 102(e) and figuring out the 102(e) date of a reference based on where and when it was filed.  It seemed like an odd placement for the class, since we’ve already covered 102 rejections, and we’ve presumably been using them for the past couple of months.  At any rate, the point of the class was mostly to cover the trickier scenarios that arise due to foreign filings.

Our second lecture was on 131 affidavits, which are used when an applicant is trying to swear behind a reference.   For those who don’t know what I’m talking about: when examiners find prior art and use it to reject a patent application, there are several subsections of law that govern what qualifies as prior art, and how an applicant might respond to the rejection.  102(a) and 102(e) can be “sworn behind.”  That is, applicant can submit evidence that he or she actually invented the claimed invention some time prior to the date of the references the examiner supplied.  102(b) and 102(d) are statutory bars, which means that applicant cannot get around the rejection by proving he invented it earlier.

Of course, swearing behind a reference  is more complicated than that, which is why we had a class covering the basics of what should be submitted for applicant to prove his assertion.  Tomorrow: more class.

~Relativity

Get it? Get it? You see, “From Russia with Love” was the second “James Bond” film, and today we had 700 part 2, so I switched it around to be like … yesterday’s… pretty lame title.

So, yeah.

Anyway, today we had an introduction to the chat software, which was chaos.  People calling each other on their phones using their computers, setting up chat rooms, etc.

We also had the second part of our 700 training.  Actually, it was more of a part 1B rather than part 2.  Part 2 is later.  Lots of interesting pieces, but nothing especially noteworthy.

~Relativity

Wow. That was the best title I could come up with. I really sat here and thought about it, too. I mean, I put actual effort in. And… that is the result.

Anyway.

Today was part one of our review of chapter 700 in the MPEP, which really has nothing to do with killing for licenses. Rather, it was a rundown of 102 and 103 issues, and we spent a little more time discussing less used 102 and 103 rejections. Chapter 700 is a lot of material to go through (much more than I have indicated here), and even dividing it into two separate sessions really doesn’t give enough time.

Our presenter gave a good effort at getting us through the dense outline in the allotted time, but it was not meant to be. If we got nothing else out of this refresher, it ought to be that: Foreign priority can only be used to overcome 102a and 102e references, not 102b! Foreign priority does not change the effective filing date! This was repeated several times.

In case anyone hasn’t seen this clever video on PatentlyO, Bar Date:

We moved on to chapter 600 in the MPEP review lecture today.

We also had a lecture about how the Office is viewed from the “outside,” given by an exceptionally funny gentleman with over thirty years of patent litigation and prosecution experience.

One thing I have learned from reading comments here and on Patently-O (and other IP blogs), and also from correspondence with some of you who have thoughtfully taken time to write me,  is that it is very useful to keep in mind that attorneys have reasons for the things they do.  And “just to mess with the examiner” doesn’t make the top 10 list.

It’s foolhardy to even try to guess what those reasons are in many cases, and they don’t have any bearing on the kind of job you do with the application; but there’s a very real psychological benefit to keeping in mind that there are two sides to patent prosecution, and that all the parties involved are real, breathing human beings who have goals beyond just getting an allowance.

I have also learned that having a little refresher never hurt anyone.  Our presenter today was a wonderful example of a refresher done well.  He gave us mnemonics of (presumably) his own invention to remember various aspects of 102, and just gave us a lot to think about in terms of why attorneys craft the kinds of claims they do.   His comments on the litigation side, especially given the cases he has worked on, were also very illuminating.  We don’t get much opportunity to discuss litigation, so that was a nice change of pace.

~Relativity