“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.


“The Search Continues…”

I said it before, I’ll say it again: Meat and Potatoes.

We talked about search strategies today.  Let me step back for a moment and clarify – when I say we did X today, I don’t mean the entire day.  I mean that we had a lecture on it.  So if any potential examiners are reading this and thinking “you spent the whole day talking about search strategies?”, the answer is “No.”  In any given day we might have between one and four lectures, plus one or more quizzes, plus exercises.

Anyway, back to search strategies.  I’m pretty impressed by the wide array of search tools available to examiners now, and somewhat amazed about how difficult things must’ve been even a few years ago.  In addition to EAST and WEST, we have access to a large number of non-patent literature databases as well as “special search help” as available.   There are quite a few options for beginning a search. We got lots of helpful hints for refining our searches and making them more targeted.  But we haven’t yet gotten guidance on how to end the search when it isn’t fruitful.  At some point, you just have to say “Gee, guess nothing does teach these claims, or motivate combination.”  And lets be honest here… one has to be mindful of production.  You have to know when enough is enough.

At the same time, you should know your freakin’ art.  A lot of questions people seem to be having would be eliminated if they thought for a moment about what searching really means.  It means that the invention you are examining didn’t come from God’s lips to the inventor’s ear, most likely.  Inventions are almost always combinations of old things put together.  That’s the nature of invention.  New uses for old things.  But that invention fits within a category, a class, and it should be a class with which you have some familiarity.  That familiarity, along with the classification listing, along with broader searching techniques, ought to be able to guide you to some narrow sets of possible art that will spur you on to finding better art.  It should give you a sense of whether or not the invention is brand spankin’ new or just kinda new.  No, those aren’t legal terms.

And then there’s reading the claims (properly) as broadly as they can be construed in light of the specification, and thinking about things in a clever way.  You probably can’t be taught that.

We had some 103 exercises this morning that had some very clever answers from whoever wrote them up.  Of course, there’s a danger with giving those kinds of clever answers to students.  First, they might mistakenly think that they, too, are that clever.  Second, they might think that they’re not, and that maybe they’re not quite clever enough to do the job.

But that’s all I have to say about that.


“Well, Obviously…”

Today was our 103 introduction, which was quicker than scheduled and pretty interesting.

There was a lot of emphasis placed on the difference between technical obviousness and legal obviousness.  You must, as an examiner, make a good case for your obviousness rejection.  You also can’t use the benefit of hindsight; that is, you can’t read the application back into the references you’re citing if there’s no real motivation to do so.  At the same time, you don’t have to have an explicit motivation to combine in the prior art.  We’ll obviously get more training that will address the clarification of Graham v Deere via KSR.  But not yet.

It seems like one of the trickiest things will be reading the claims in the broadest light possible with respect to the specifications; we’ll have to learn to treat commonly used expressions and terms in a way that is more general than we ordinarily would mean them to be.  That can be tough.

We also had a very funny presentation about leave, comp time, overtime, and work schedules.  If you’re thinking about becoming an examiner, consider this: with the IFP (Increased Flex Plan, I believe) you can basically work any 80 hours in a biweek.  You don’ t have to set a schedule beforehand.  You can work Saturdays, if you want to.  You can work up to 12 hours a day or just not come in at all on a day that is inconvenient.  You can leave in the middle of the day, do what you need to do, and come back at 8pm that night.

That is what I call “flexibility.”  Most jobs that offer flexible schedules require core hours every day, or at least require you to declare when you’re going to work up front.  Not so, here.  Of course, most jobs don’t also have production requirements like the PTO does.  But life is about trade-offs.


“Prior Art? like Picasso?”

Today was the start of week four.

Today was also our first real 102 lecture, featuring such interesting topics as 102 a,b, and e.

If you can reject on a, b, or e, reject on b.

If you can reject on a or e, reject on e.

If you can reject on a, well, ok.

For those of you unfamiliar with 102, it’s the statute that determines what constitutes “prior art.” That is, what sort of publications or previous inventions make a prima facie case that the inventor didn’t invent what he described in his application? I’m going to have to go back over the lecture notes, because we had a … snafu with the lecturer’s schedule, so we had a very rushed introduction. Luckily, we do get copies of the power point.

For potential new hires, this is the important stuff. 102 and 103 are (in my unexperienced opinion) the meat and potatoes of examination. Occasionally you are going to see a perpetual motion machine, or claim language that is incorrect or not enabled in the specification. But where you’re really going to spend your time is in the search, and in determining whether several patents would motivate a PHOSITA to combine them.

To that end, we also had an EAST introduction today, which is the search tool used most widely in the office, overall. It’s actually pretty neat the way they let you combine searches and increase complexity with the query language. It almost seems fun!


Ok, so…

I’m a liar.  I didn’t go back and edit yesterday’s post, yet.  I still plan on commenting on the material this weekend.

Today was… interestingly structured.  Since we had so many lectures yesterday, we had three quizzes. But a quiz comprises 30 minutes to an hour of review, thirty minutes of quiz time, and thirty minutes of review time.  So lots of time allocated to quizzes.

We also looked at classification insight, which is just a tool for navigating all the classes and subclasses that patents can be filed into.


“What does ‘means’ mean?”

Four lectures today: 112, 6th paragraph, introduction to prior art, classification, and the application filing process.

35 USC 112, 6th paragraph covers the language used for “means-for” and “step by” claims, and how those are handled when we come across them.

The introduction to prior art was really just an introduction to 102 and 103 issues.  That is, finding art that applies to the whole or part of a claim and/or finding obvious combinations of art.

Classification was just an overview of how classes and subclasses are laid out, so we have an idea how to classify allowances that we’ll (one day) make.

Application filing dealt with some of the details of how applications have to be filed (150 words maximum for the abstract, filed in English or a foreign language if certain conditions are met, etc).

A new group of cadets (are we cadets? academy-goers? novices?) started yesterday, and are going to have their first interview with an attorney tomorrow.

So, new junior examiners, by week three you will have covered: 101, 112 1st, 2nd, and 6th, and begun to learn about 102 and 103.  All those mysteries from the first two days will be revealed to you in all their glory! Well, maybe not.  But take heart, the statutes will start to make more sense soon.

Note: I am exhausted, so I will fill in details tomorrow.


“By metes and bounds…”

We had two lectures today.  One was on 112, 2nd paragraph, and the other was the second part of claim interpretation.

112, 2nd rejections are only to be applied when claims are unclear to such an extent that the examiner cannot make sense of them.

It seems like a lot of people are having trouble figuring out why one would use an objection as opposed to a rejection.  It was easy when the explanation was “Object to problems in the specification (or elsewhere), reject claims.” But as always, it isn’t that simple as we dig further into things.  So, if I have a claim that I can reasonably reject on 112, 2nd grounds, or I can object to the claim, which should I do?  What is the practical consequence?  One way to look at it is to ask how applicant might challenge the decision:  rejections can be appealed, objections are petitioned.  I don’t think that means very much to novice examiners – petition vs. appeal really doesn’t change the game for us much at this point.

An interesting perspective about when to object/reject on 112, 2nd grounds:  If you can reasonably figure out what applicant meant, or how to fix the claim to make it “right,” just make an objection.  If you can’t figure out what the heck is being claimed, make a rejection.   It may be similar to raising the “high priority” flag on an email; it’s supposed to be stronger when you reject as opposed to when you object.  Or perhaps by stating an objection, what you’re really saying is that the problem is not itself material to patentability; a rejection raises that doubt.

The lecturer seemed uncannily prepared for us to falsely associate 112, 2nd with “breadth” as opposed to “clarity.”  When all you have is a hammer, and every problem starts to seem like a nail.  Since we really haven’t done any direct work with 102 or 103, I think many of us find ourselves looking over the exercises and saying “That’s not patentable, and I’m going to find a reason why!”  So we (incorrectly) attempt to apply 101, 112, or whatever bit of terminology we learned that day.  It’s part of the process.   I should say that I don’t think there’s a knee-jerk rejection reflex going on, it’s just that many of the exercises we are given have very, very broad claims that would probably be easily addressed with a prior art search.  Lacking that capacity, we come up with all kinds of crazy things.

We also learned about  product-by-process claims and some of the court decisions that have shaped that jurisprudence.  Just a quick rundown: a product by process claim is really a claim to the product produced by the process.  As such, if some other art shows an identical or obvious variant of applicant’s product, the claim must be rejected… even if the process is entirely different.  Unless, of course, there is a substantial structural difference between the products created through the different processes.

That’s not to say that applicant can’t claim the process for creating the product, if the process is itself novel and non-obvious.

I think we have four lectures tomorrow… so it is time to cut this post “short.”


“So you claim…”

Claim interpretation!

The infamous “the applicant can be his own lexicographer” line!

Limiting and non-limiting claim preambles!  How you determine the meaning of every single last word in a claim!

Actually, pretty interesting stuff. One thing some people had trouble with was understanding what, exactly, the preamble might be limiting.  The answer, I think, is simply “the claim.”  If the preamble is non-limiting, then you don’t have to use the anticipated application (or other description) in your prior art search.  You don’t have to worry about it in terms of it changing the scope of the claim.  If it is limiting, then you do have to consider those things.  Not that it is that simple, but at least it’s a start.

We had a very entertaining presentation on Harassment.  No need to go into it.

We  had a presentation on “wellness” (part of the “soft-skills” curriculum) and dress at the office.  Now, as of this writing, there is no official USPTO dress code.  Our presenter was kind enough to point this out at the beginning.  So I’m not sure why, exactly, they decided it would be a good idea to give us strong suggestions about what to wear/not wear.  I suppose it is a reasonable aspect of professional development… but confusing if you had earlier understood the dress-standards to be somewhat different.

Anyway, it looks like things are going to start to ramp up this coming week.  I’m looking forward to it!


Community Day

Today was “community day.”

Not much to say about that.

We learned about the PAP (Performance Appraisal (I think) Plan). Basically our intro to the critical factors of Patent Examining, Production, and Workflow.

If anyone ever reads this and is considering becoming an examiner, you should know that you aren’t on production for the first year. But you are, because production is used to determine promotion. And, if you’re really not cutting production for your GS level by the end of the year… well, you can fill in the blank, there. That wasn’t mentioned in the presentation at all, but that is just what I have gathered.