Patently Academic

Our day started out with a lecture about foreign patents.  Which is to say, it was a lecture about how to download foreign patents, and where to go to request foreign patent assistance.

We also had a meeting with a group of SPEs (Supervisor Patent Examiners/Supervisor Primary Examiners, depending on who you ask) who took our questions about productivity, SPE expectations, and how they see our jobs in relation to theirs.  They gave us some advice about how to plan our goals and when to get help.  Nothing revolutionary, but interesting nonetheless.

The highlight of the day, however, was our meeting with Commissioner Doll.  Keep in mind that he had canceled on us two or three times prior to this, so a lot of people were dubious that he would actually show.  He did, and he lived up to the hype of him being an engaging and entertaining speaker.  He spoke a little about quality and the efforts to increase the retention of examiners.

Of course, there’s no way to know how candid he was; I’m sure the commissioner is asked the same questions many, many times in the course of a week.  Considering we’re all new to this, I doubt anyone asked anything that would deviate from his routine.

It was a good experience nonetheless.

~Relativity

Today we had time for large group question and answers, something akin to diversity training, the second part of  “reporting out,” and a presentation on production.

The “reporting out” series was helpful, largely because it reinforced the ideas that:

1. You won’t be writing an office action until your trainer has ascertained that you have a solid grasp on the application and your grounds for rejection or allowance.
2. You are capable of doing the work in a largely independent fashion, even at this stage.
3. You are expected to know when to ask for help, and help is available to you.
4. You are not expected to know a great deal at this stage.

In addition, the lectures give us a sort of outline form to follow when reporting our cases to our trainers.  This helps us get our work done more efficiently, and allows our trainers to concentrate on trickier areas when they arise.

The diversity lecture was very funny, as was expected.

~Relativity

In another thread, someone asked about examiner reactions to the job-satisfaction rankings for federal jobs that were recently published. Initially, I just responded within the thread, but since I didn’t have anything else to post today, I thought I’d go ahead and turn it into a post.

potential examiner asked:

Hi Relativity,

Can you shed some insight on how the new examiners have reacted to the PTO’s ranking among government agencies? It is not very positive and from an outsider, it would seem like a depressing place to start a career.

Well, POPA is doing their job, and I won’t comment on their analysis of the rankings.

I haven’t heard anyone else muttering about the rankings, to be honest with you. Let’s be clear: rankings are totally irrelevant when it comes to whether or not YOU enjoy the job as an individual. Rankings are great for trying to influence change in policies, salaries, etc. Rankings are good for figuring out what employees do and don’t like about the job. But unless something is actually changed by someone, the rankings don’t mean a whole lot.

There are some people who just won’t like the job, no matter what. These are people who don’t like to write, who want hands-on engineering or lab work, or who prefer looser, non-equation based accountability for their work. This isn’t an exhaustive list, of course. And there’s nothing wrong with any of those things – the sooner they find out the job isn’t for them, the better off they probably are.

Then there is the spectrum of people who can barely stand the job, those who are content, and some who love it. Same as with any job, really.

In all fairness, I found the interview process to be very upfront. No one tried to convince me that this was the job for me – everyone involved was very clear that this is a job for some but not all.

But I can say that the PTO has a lot of benefits that other agencies don’t have, and I won’t even attempt to guess why those benefits didn’t translate into higher rankings. I’ll list a few:

1. High pay scale. PTO pays well compared to other agencies, especially for people coming straight out of college.
2. Bonuses. I have a lot of friends who work for the federal government in other agencies, and none of them get bonuses.
3. Ability to become GS-14 within 5 years. Many agencies cap the number of GS-13s and 14s that they will promote. You have to wait for someone to die or retire.
4. Overtime. A lot of agencies don’t want you doing a lot of paid overtime. Why? Because it is difficult for them to know if you’re actually being productive during that time. Since the PTO is production centered, it is easy to know if you’re living up to your end. SPEs are happy for you to work overtime, assuming you’re doing the job well.
5. *Flexible Schedule!* Not so much during the Academy, but after you leave, your schedule becomes very, very, very flexible, as long as you’re able to work independently. I had friends in other agencies swearing to me that I was wrong about the schedule, and that *surely* you have to declare your hours for the quarter. Nope. Your time can vary by the day. Just get your 80 hours in per biweek
6. Lots of reading, writing, and researching. For some people this is a negative. For others, it is great. It’s individual.

Please don’t mistake me for a Pollyanna. Like any job, there can be negatives, and I am not exactly a veteran employee with lots of experience on the job. But I’ll let other people speculate on those issues.

So while I’m sorry that I can’t give you a more direct answer to your question, I hope this helps.

Here’s my advice to you, for whatever it is worth: take a look at your own strengths and weaknesses, talk to people who have done the job for awhile, and ask them about the qualities that lead to success or failure in the office. Ask them about what they like and what they don’t like. Talk to people who will be in the art unit you’ll be going into to get a more accurate feel. Go ahead and attend a job fair, and/or have a conversation with the SPE who interviews you.

In my humble opinion, that kind of information is worth much, much more than any ranking chart or survey.

~Relativity

If some of you are wondering why I haven’t been posting very frequently, it is because we have moved largely into examining applications.  Some TCs have special lectures dealing with specific technologies or topics, but we aren’t doing any large lecture work.

We are not technically “on production,” yet.  At least for this next two weeks, we’re just working on applications and learning the mechanics of the job.   Sitting down and working on an application is, obviously, a lot different from just hearing about the process in lecture.  It is easy to keep little details in mind the day of the lecture and quiz, but much more difficult to recall all of that while working through an application and trying not to waste time.

Now, different labs have different levels of experience, at this point.  Some labs have placed little emphasis on progressing beyond reading and understanding one’s first application.  Others have been working on them for weeks, and have already produced office actions.  Since there is some schedule flexibility for the trainers to play with, variability is to be expected.

After two weeks, we go on something akin to production.  That is, we’ll still be spending the majority of our time working on applications, and we will be expected to show improvement as we go forward for the next six months or so.

I’ll try to update with details more frequently.  As always, thank you for reading.

~Relativity

It was “back to the mothership” today, as all the labs visited their TCs and met SPEs (or not) from their particular arts.

So, not much to report.

Compact prosecution. Another very good lecture today on how prosecution should be conducted.

The point is to put as much work as possible upfront, and present a correct first action on the merits that addresses all issues of patentability, as well as any issues that the examiner reasonably foresees.

There are good reasons to do it this way, such as the facts that it saves applicant time and money and makes a clearer file wrapper for anyone who has to take it up subsequently. Writing clear office actions that don’t assume the reader will understand your points is key.

For those of you who don’t know what an office action is, it is the Office’s official response to applicant’s application for a patent. It addresses any legal issues and informalities such as spelling errors or other errors. The way it is supposed to work is that the examiner writes a first action on the merits, and applicant either doesn’t respond and abandons the application, or responds with amendments that address the issues raised in the first action. Assuming the examiner has done a thorough and correct job, the second action should be final, and should either be a rejection or an allowance. If the examiner screws up, he/she must fix the errors.

Now, there is good motivation for an ethical examiner to follow compact prosecution guidelines: you only get one count for the first office action, and one when the case is issued or abandoned. The more correspondence necessary with applicant’s representative because you haven’t written clearly, the more time you are spending on the case without credit. It also means more time writing multiple non-final actions to address all the deficiencies in the first action.

So now that I’ve laid out some of the case for compact prosecution, how about what seems to be the alternative argument for new hires? That argument would be: “Do as many applications as you can.” Now, no one who has said this has meant “do a crappy job.” Here is the argument that I’ve heard from several different people:

You just aren’t going to get it completely right on your first few actions, no matter how much time you put into it. If you try to be a perfectionist, you’ll never get through applications fast enough. The more you do, the better you get, and so the important thing is to do as good a job as you can in as little time as you can do it, so that you get that experience.

No one is advocating putting out unreasonable office actions, of course. By doing a faster job, you somewhat increase the burden on your trainer to review your work, but you are also getting feedback faster from your trainer, which means you get to corrections faster. So this advice isn’t really contrary to compact prosecution, as it might initially seem. But the question becomes: will the trainer’s advice to fix my office action be to do what I would’ve done anyway, had I allocated myself more time?

Answer: Probably not.

~Relativity

We had two superb lectures today that were superb for different reasons.

The first lecture concerned going from first seeing a case sitting in your docket up to the search.  Not that we haven’t been presented with how to do an inventor search, or how to check the IFW for completeness, or all sorts of other little things.  But we hadn’t yet learned when to use all these little things, nor had we seen them put together in a complete package or checklist fashion so that we could do all the necessary prep-work that must be done before one starts searching.

While this might seem a little silly, picture going through a computer-building 101 style course, wherein you learn what a video card is, what a hard drive is, what a processor is, what memory does, etc.  But the whole point of the class is to actually assemble a computer.  So sure, you have to know what all the parts are, and you’re glad to know it.  Four or five weeks into the course, however, you start looking down the horizon and you realize that sooner or later, someone’s going to actually ask you to put some of these things together and ship them off to a customer somewhere.  You start wondering: “But… how do I actually use all of this information? What do I put in first, the hard drive or the memory? How do I make sure it’s all right?”

And really, the answers to some of those questions might be “it doesn’t matter,” but you still want them answered.  You want a process you can follow to get from point A to point B.  That is what this lecture provided.  Our lecturer laid everything out into a series of steps that were logically connected, and which also had good safety bounds so that you would have a good idea when to stop and ask for help.   Even when you have a lot of leeway on production, like we do right now, you don’t want to take any longer than necessary to do a good, complete job.  Doing things out of order, or missing show-stoppers that you could’ve found in an hour instead of in four really make it really difficult to be efficient.

The second lecture was 103 part 2, which gave us some practical examples of showing a combination as well as introduced us to 103(c).  And while I appreciated the practical examples greatly, I think one of the best things that came out of the lecture was that many of us learned what we didn’t know about 102, and about claim limitations.  Some of it we had definitely gone over in earlier lectures, but “out of sight, out of mind.”  If you don’t refresh that information periodically, it is very easy to forget it.  Some of it I don’t think we really covered with the level of depth that our lecturer was expecting.  So, luckily, he asks us questions and is therefore able to gauge how much we know.

And I’d much rather  figure that out now, than waiting until later.

————————————-

Non-IP person translation of key terms:

inventor search: checking to see what other applications the inventor has filed or what patents he has been granted.

IFW: Image File Wrapper.  This is the electronic “folder” of information that gets scanned in from the paper or electronic application.  There can be errors in scanning or filing, so you have to check that everything is there.

~Relativity

Today was restrictions. Do you have more than one invention in the application? Does examining those multiple inventions constitute an undue burden on the examiner?

So, of course, we have a bunch of decision trees to follow to figure out if something may be restricted or not, which are too numerous for me to go into now. The analysis is sufficiently daunting that I don’t think most of us will even attempt a restriction unless necessity compels us to.

I’ve been told by a few folks that I should break things down into plainer language so that people who are interested in the job, or interested in patents but have no training, can more easily grasp what I’m getting at. So I’ll take a first stab here:

When an examiner receives an application, there can be all sorts of things in the specification that aren’t claimed – that is, that applicant doesn’t want legal protection for. Applicant can write about tables, alarm clocks, and microchips in the specification and only actually ask for a monopoly on the alarm clock in the claims. Sometimes, however, applicant writes claims that have multiple inventions in them. So basically, with a single application, applicant is asking you to search for prior art and make a determination about patentability for two different things. They might not even be in the same art. For example, a new engine that uses a new lubricant. The examiner would really have to treat the lubricant and the engine as separate inventions to get the job done, depending on how they’re claimed.

So if that represents an “undue burden,” that is, the examiner is going to have to do much, much more work than usual as a result of this, he can see if the claims meet the requirements to do a restriction. The restriction asks applicant to turn these claims into separate applications, or to pick one invention and go with it. It can be a useful tool if used properly.

~Relativity

Today presented us with two very helpful and informative learning sessions, and one inscrutable  one.

We were given hands-on introductions to some of the NPL (Non-Patent Literature) tools we have at our disposal, which are considerably more vast than I had thought.  I probably shouldn’t have been surprised, but the efforts the office has made to modernize really shine through when you learn about the EICs and how easy it is (or can be) to do research without leaving your office.

We were also given our first lecture on actually writing an office action, as well as some more detailed instructions to accomplish compact prosecution.  I think I’ve said before that this is an aspect that new examiners are really going to have a hard time accepting: you have to do the whole process.  When we learn about statutory bars and enablement rejections that can (theoretically) sink an application, it is very easy to forget that one is only a human being and therefore not only capable of, but liable to, make mistakes.  But examiners can make mistakes just like anyone else, which is one reason why applicants get attorneys with fancy degrees to prosecute their patents.  As such, you have to be prepared, especially as a beginner, to find out that what you’ve done is not as thoroughly correct as you thought it was.  Not that the lecturers don’t point this issue out; but human beings as we are, often tend to filter out unpleasant details like the implication we might make a mistake or two.

The inscrutable one: Double patenting.  Actually, I’m exaggerating.  There were some moments in the lecture that I think went clear over everyone’s heads, mostly since we haven’t yet covered restrictions.

On the other hand, I think 35 USC 121 is pretty intelligible just based on a kindergartener’s  fairness metric: don’t tell someone to do something and then punish them for doing it.  For those of you who don’t know what I’m talking about, it is possible for the office to compel applicant to separate his application into multiple applications.  The idea is that a patent ought to cover only one invention, and if you are claiming more than one you should have more than one application.  At the same time, there is a bar on double patenting, or getting two patents for the same invention.  There are exceptions, but I won’t cover them here.

So 121 tells examiners that we cannot use those divided applications against each other as prior art.  Kindergarten fairness.

Tomorrow we’ll actually cover restrictions, so that should hopefully clear up most of the lingering doubts about double patenting issues.

~Relativity

Today was 101 day.

I’m not kidding.

We had two lectures as well as exercises and legal readings on what kinds of claims do and do not appear to be statutory. We had good clarification of what kinds of claims are judicial exceptions, what kinds are not, and what preempting a judicial exception is. Somehow, throughout the entire lecture, I could actually hear attorneys howling with pain.

We had some interesting examples for the “concrete” criterion, but I won’t use them.  As my own example, without reference to potential patentability,  choosing beauty contest winners by choosing the most beautiful girl isn’t very concrete. That is, the result isn’t repeatable.  Photographing faces of contestants, projecting their faces onto a grid, measuring the symmetry of their faces, and choosing as the winner the contestant with highest measured symmetry, is a repeatable process.  Again, these examples are mine, warts and all.

Our lecturer pointed out in the morning that the example answers for signals might have to be revised by the afternoon, since a verdict on that issue is pending.

We discussed transformation of matter, and that printing on a page without modifying the substrate is not considered a transformation that matter.  Note: that doesn’t mean that it isn’t statutory.  It just means that it doesn’t fall into the category of “transformation of matter.”  Storing things in computer memory is also not a transformation of the matter of the computer memory.

We also talked about real-world results, and a bunch of other things I’m sure I’m omitting. I’ll have to go back through my notes to see what else was covered.

Also – I noticed Kim Examiner pointed out that the current group of cadets is going at a “glacial pace” in a comment on the Patently-O blog. Yes, Ms. Examiner, some days go pretty slow. There’s definitely a middle ground somewhere between two weeks of training and eight months. But I did want to set the record straight for anyone who thinks that we’re just doing lectures for eight months – we start doing actual examining at around two months in. After that, our lectures are all MPEP related, and take up much less of our time.

Oh, and Kim? May I call you Kim? Thanks for calling me cute.

(“Bismark, you won’t believe what happened to me on the PatentlyAcademic blog today…”)

~Relativity