“Manual Transmission…”

Today we started our MPEP proficiency exam courses, beginning with chapters 100-500.

One of the new ideas brought in to the Academy – I know not why – was that new examiners should take a proficiency exam at the end of their training.  This exam is similar to, if not identical with, the exam that GS-12s take before starting the program.  Unfortunately, getting a passing score on our proficiency test will not exempt us from taking the “real” exam later on.

Our lecturer did make a comment that made a lot of sense:  preparing for this exam will allow us to become familiar with the MPEP and get used to searching it for information.  Taking that a step further, I imagine that one of the most important goals of the Academy is to put out self-sufficient examiners who can do most things for themselves.  Part of self-sufficiency is being able to use the tools at your disposal to answer your own questions when possible, and being able to do that efficiently.  And while some of my fellow cadets may feel that the Academy period is too long, I also see a lot of training going on, day to day.  I don’t even mean people who just didn’t “get it.” People who have been paying attention and doing well are corrected for both small and large errors as they go along, because that is part of the learning process.  After another four and a half months, those errors should be at a minimum.  SPEs shouldn’t have to worry that we’re going to need lots of hand-holding after going through eight months at the Academy.

I hope.

Anyway, to return to our class, our lecturer spent most of the time covering test-taking strategies and stressing the importance of practice and smart preparation for the exam.  She emphasized some issues on effective filing date that can be confusing,  and went through the outline of the chapters briefly.

As usual, she was very entertaining, especially given the material she had to work with.


“Forever and Ever, Amend”

It’s almost that time; when eager-faced young examiners will fire up edan, and notice a curious number in the tab marked “Amended.” One.

After months of putting out Office Actions, soon all good little examiners will be receiving the dubious honor of their first responses from attorneys. It’s probably still a month or more away, but eventually the responses will come.

Hopefully, we’ll have paid attention to compact prosecution practice, and the responses from attorneys will either put the cases in condition for allowance or applicants will abandon their applications once faced with the awesome might that was our Application of Prior Art.

Honestly, though, we’ll probably be doing a lot of second action non-finals. Because we’re new, we don’t know our arts especially well, and we don’t have the instincts to know which art to apply when.

Today’s lecture was about what we should expect to see in responses to our office actions. Who we should expect those responses from, what they should address, and how we should respond in kind. Specifically, it is very important to determine when we can legitimately “go final,” and when we ought to go non-final in our actions.

For those who aren’t familiar with the process, the Office sends out a first office action on the merits of any particular case. Sometimes it’s a first action allowance, sometimes a non-final rejection. If we sent out a rejection, applicant or applicant’s representative needs to respond to our rejections with arguments or amendments. Examiners must, in turn, respond to those arguments or amendments. If an examiner changes the grounds for rejection (in the first action, the examiner used one piece of prior art, and in the response she uses a second), and that change was not in direct response to applicant’s amendment of a claim, the examiner must not issue a final rejection.

If, however, the examiner must apply new art to meet the claims as amended, the examiner may be able to go final. Making the wrong decision could be unfortunate for the examiner, since if applicant wins an appeal of the examiner’s decision, the examiner will have to start working on the application from scratch – without getting credit.

Since I know this will be a touchy subject for some people out there, let me be very clear that I have presented a mere fraction of the subject matter covered during the lecture today, and as always, my comments are a simplification of some of the important points. The determination of when an examiner’s office action should be final or non-final must be treated on a case by case basis, and those of us still learning must consult with our trainers or supervisors before making any determination in that regard.


Announcement (Also Part Deux)

I mentioned this in my previous post, but obviously I need to check my email more often.  I got a nice note asking me to post this full announcement up, and I’m happy to oblige.

USPTO Webcast on New Claims and Continuations Rules Thursday, August 23rd

Date:   Thursday, August 23, 2007

Time:   1:00 p.m. (EST)


The U.S. Patent and Trademark Office (USPTO) will hold a special webinar on Thursday, August 23, 2007, at 1:00 p.m. (EST) on new claims and continuations rules that will allow the agency to continue to make the patent examination process more effective and efficient by encouraging applicants to use greater clarity and precision in describing the scope of their inventions.  The new rules will be published in the Federal Register available at www.uspto.gov  after noon on August 21, and will be effective on November 1, 2007.

During this live, two-hour webcast, USPTO officials will explain the new rules and answer questions.  The presentation and audio for this event will be streamed over the Internet.  All participants need is a computer with an Internet connection, sound card, speakers and the ability to view Windows Media presentations.

To register for this free webcast, click on the following link:


An advance copy of the presentation will be made available to registrants prior to the event.

If you would like to receive regular updates from USPTO on its eCommerce initiatives, please register by clicking on the link below:


“On Restriction…” Part Deux

Today we had part two of our restriction training. Those in the chemical arts are all too familiar with restrictions, by now.

This was a very detailed lecture, and it would be impossible for me to summarize it in the time I have.

Much of it was reviewing what we covered in the first part. There are some arts in which examiners do very few restrictions, even when there are many claims. So this lecture fleshed out some of the details for those examiners who have done little or no restriction practice as of yet.

We heard about rejoinders. No, rejoinders aren’t witty retorts. When an examiner makes a restriction requirement, applicant or applicant’s representative elects which set of claims he or she wants to have examined now. So now we have “elected” and “nonelected” inventions. But the nonelected claims might depend from the elected claims. So what happens if the elected claims are allowable? Well, the dependent nonelected claims should be compliant with 102 and 103, assuming they are proper dependent claims.   So the nonelected claims are brought back in and examined.

We also went through a laundry list of combination/subcombination stuff, linking claims, genus and species, and more. I’ll try to post more on restrictions when I get a chance.

Also, an important note: On Thursday, August 23rd, at 1:00 p.m. EDT there will be a webinar on the new changes to the rules on continuations and claims. You can go to the USPTO website and register for the event from there.


“That’s Classified…”

We had the second part of classification today.

Part of an examiner’s job when first looking at an application is to figure out whether or not she should even be working on it. All applications come into the office and are pre-classified, mostly based on keywords, and are shuttled off to wherever seems appropriate. As a result, there are some near misses. Applications usually get into the right Technology Center. It isn’t rare, however, for them to fall into the wrong art unit.

So why should an examiner look at the classification on her applications carefully? Well, working on something outside of your specialty means that you’ll probably be less efficient, for one. Especially during training, working on applications in your class gives you valuable experience; working on applications outside your class only gives you experience in realizing too late that you screwed up.

Finally, the examiner must classify the invention when it is time to allow it. This is essential so that the rest of us can do classification searches (searching for only things that belong in a certain category), and as an initial hint to what the invention is before we even read the abstract or spec.

Our lecture today covered some of the international standards as well as giving a refresher on US practices.

We also had a lecture on TSP and FERS, which was very helpful.


“Is That the Case?”

Here’s a quick “self-training” question for some of you who are more experienced examiners (and others, of course): should trainees start reading case law?

“in training” had a comment in the “Strange Application” thread, which made me think about this question:

One thing I strongly advise you to do (while you still have time), is to *learn* as much as possible from examination, rather than just trying to get cases out the door as fast as possible. Seriously *READ THE MPEP* – there are sections in that thing that are not covered in any lectures, and are quite useful in examination. Also, read case law – not nearly as important or helpful as reading the MPEP, but being familiar with court precedent allows you to formulate some arguments that you might not be aware of. Finally, skim some office actions from your primaries. This will give you an idea of how things are typically done in your art – the format of the actions, the thoroughness of the rejections, the number (and type) of restrictions done, etc.

(bold and italics added)

While I can’t disagree with most of what he had to say, I am of two minds when it comes to self-studying case law. On the one hand, “in training” is right; you can learn a lot from case law. Judicial clarification of the issues could be a real asset when trying to decide what to do with a particular rejection or allowance.

On the other hand, most new examiners – and most examiners, I believe – are not lawyers. Case law is usually relevant when the fact pattern of your application/record matches that of the decision in the case you are attempting to apply. Determining whether or not the fact patterns match (or that there are such things as fact patterns) is probably an alien process to the majority of examiners. Second, the language used is very important, and we simply aren’t trained to interpret case law. People get paid to do that and give us guidance in the form of MPEP corrections and additions. They get paid well to do that. For example, the recent CAFC ruling regarding the doctrine of equivalents might easily be interpreted by a non-lawyer to apply also to obviousness determinations. Do I know if it does or not? No. (Of course, I haven’t read the case, either.)

Third: Do you think you’ll be able to convince your trainer or SPE that you’ve properly applied case law, especially if you can’t find corroboration in the MPEP?

Finally: Doesn’t applying case law open the examiner up to all kinds of problems? You’re arguing with a lawyer about applying case law, which they are much more trained to deal with than you are. You’re also making a determination that you can’t necessarily back up with anything published by the Office. Doesn’t that make you a sitting duck in terms of quality checks?

Now, there are some cases (like Graham v. Deere) that make good sense to read, since we use the Office’s interpretation of those decisions on a daily basis. So anything that helps you understand those factors better, while still being consistent with Office policy, seems like a good idea. Otherwise, aren’t you playing with fire? If there’s a generally applicable court decision, the Office should supply guidance on how to apply it… right?



“U N I T Y…”

Today we learned about the unity of invention standard for international applications.  However, we won’t be seeing any PCT (Patent Cooperation Treaty) applications (or so we’ve been told) until after we get out of the academy, so I’m afraid this information is going to rot away by the time it is actually useful.

Let’s step back for a moment.  What is an international application?  Well, there are no international patents, but there are international applications.   The idea is that an individual or company can create an application that meets the formalities for all countries that participate in the Patent Cooperation Treaty; they don’t have to worry about the US having a different standard margin, for example, than Japan.   Applicant picks a search authority who does a search and issues an opinion about the potential patentability of the application based on the PCT standards.

Applicant has 30 months total to move from the international stage to the national stage; that is, applicant picks which countries to pursue actual patents in.  So we generally look at PCTs in two situations: when we do the PCT “examination” (it isn’t a true examination) and when we look at the national stage application that has been filed in the US from the PCT.

By way of example: I create an in international application for widget X.  I choose the US as the search authority, and an examiner does his thing with the application.  He searches, he writes his opinion concerning the patentability of the invention, etc. I take a look at the report, and I now decide where I want to spend the money to get patent protection.  So I might choose France, the US and Japan.  Now I have moved to the national stage with these three applications.  The examiners in each of the respective countries consult the preliminary findings of the first examiner, and they go through the prosecution of the applications.

But things get even more complicated, because what we do to restrict inventions in the US is different from the unity standard applied to international applications.   To give a quick (and very simplified) refresher of restrictions: an examiner can restrict, or say that an applicant is trying to claim more than one invention, if there are multiple inventions in an application and trying to deal with all of them would represent an undue burden.  So if your invention is a bunch of known things put together, that’s unlikely to happen.  But if your invention is actually a combination of a bunch of unrelated sub inventions – like my new engine with new lubricant example, then the examiner is well-served to restrict those so that the inventor or assignee will end up with two or more patents, rather than one.

The unity of invention standard is considerably different, and I’m not going to go to great lengths to get it “right.” The idea is that if all the claims share a specific technical feature (something not known in the prior art), and the claims as a whole are directed to a unified invention, the claims have unity.  So for the unity standard, my engine and lubricant claims might actually be combinable in a single application.

One can imagine that this makes things difficult for examiners both in terms of doing the job for these cases and in terms of understanding the new standards to apply.

It is all interesting nonetheless.


“A Strange Application…”

Today we had additional training on PCT applications, and some cadets had training on another non-patent literature database we can access.

I think many of us are at an awkward stage: we have learned enough basics that a lot of the information we’re seeing is somewhat repetitive from what we learned earlier. At the same time, it is easier to get lost on the newer, more advanced material. I think I sense some nervousness in much of the class as we enter the final days of our non-production time, especially since many people still haven’t finished their first Office Actions, yet.

There’s no great reason to be worried. We have time to improve and learn over the next six months in the academy. At the same time, there’s the prospect of accelerated promotions, which many people are anxious to get. With many new jobs, I think, there are a few stages that new hires go through.

  1. Excusable Incompetence. I’m new here, I’m not expected to know anything.
  2. Fear About Future Competence. I’ve been here a little while. I should be better at this. Everyone else here is good at this, why am I not?
  3. Increasing Competence (hopefully). I’m getting better at this. I remember things, I can do tasks with less supervision. I’m catching on.
  4. Competence (again, hopefully). I can do this job independently. For the most part, I know the ins and outs.

Most of us are at stage two. Maybe many people aren’t fearful, but that’s a natural reaction. After all, our trainers and other experienced examiners make it look so easy. Will we be able to work at that level? All you can do is your best; focus on learning and not asking the same questions over and over, and doing as much as you can.

Perhaps I’m overstating the case, however. Perhaps most in the class are supremely confident. Many of us have been working on applications in some form or another for a little while now, without the pressure of production, so perhaps that introduction is enough to convince most that they can do the job.

Of course, my point isn’t about the universality of fear at this particular stage in the process, but rather that I’m sure everyone goes through it. Maybe not at this particular job, but in another. It’s something to work through and acknowledge as part of the natural learning process.

And sometimes it helps to know that you’re not the only one.