Patently Academic

Before starting: I feel compelled to point out once again that I am not reproducing PTO materials in any way… I am summarizing my own rough understanding of the statute, whether right or wrong. I am not a lawyer.

Day 7:

Yes, we worked with the electronic MPEP today.

Yes, we futzed around with the intranet resources.

But the highlight of today was our lecture on 35 USC 112, paragraph 1. There was a lot of material today, and I’m not even going to try to summarize it all, but we did learn a lot of very interesting things.

There are three aspects to 112, p1 that we have to worry about:

1. Written Description

2. Enablement

3. Best mode

Applicant must provide a written description of the invention – that should be obvious. Like I said in a previous post about quid pro quo, if you don’t disclose the invention such that a person of ordinary skill in the art can make and use your invention, you aren’t fulfilling your part of the bargain. But written description is a really low bar to meet.

The next item is enablement… does the specification provide adequate information for the PHOSITA to understand what is claimed? Is everything in the claim defined in the spec, or is it understood in the art?

Finally, best mode. Has applicant disclosed the best way to build or use the invention that they knew of at the time of filing? Not a likely rejection.

One thing I found very interesting about enablement is that it is a very severe rejection. Rejecting on enablement can put a death sentence on an application on the first office action, because if applicant can’t prove that his spec was adequate, he is barred from introducing new matter into the description. Since he can’t fix the non-enabled claims, he has to file a CIP (I think) and go from there, which is costly.

After doing a few exercises on what is an allowable amendment under 112, p1 and going over the intricacies of it, I really understand why some people stay at the PTO for years and maintain enthusiasm for the job. This is work that really engages your whole mind, and challenges you to really think about things. I’m still going over 112, p1 in my head, so I’ll probably post some more about it later.

~Relativity

Is in the claims!

Yes, we had that famous lecture today.  It was pretty entertaining, although I did feel like I should have run out of the auditorium pumping my fists, Tony Robbins-style.

I almost entitled this post “Do you understand the words that are coming out of my mouth?”  Because really, that’s what it boils down to – do you understand the specification? Do you understand what the invention is supposed to be?  Do you understand what all the words themselves mean, and are you sure that there’s no other way that they can be understood?  Do you understand the claims?  Do the claims make sense in light of the spec?

I actually got into a discussion with another junior examiner the other day about how well we have to understand the invention.  He seemed to think that you really “only” need to understand the invention sufficiently to find prior art.  But how can you find prior art if you don’t understand the invention well?  Maybe I’m wrong, but the goal shouldn’t be to issue a rejection based on any old prior art that is half-way related.   The goal is to find good prior art that reads on the claims, find some other objection or rejections if there are any, or allow the claims if they are allowable.  But you just can’t make that determination unless you’ve really invested some time and thought into understanding the document in front of you.

We also took a look at some of the automation tools, including the form paragraphs tool and our electronic docket system.  We only did some very, very basic stuff with it.  They want us to get little pieces of all the tools at first, so we get used to them, and then give us more complete guidance later.

~Relativity

Today was a pretty relaxed day. We had a lot of talk about “expectations,” in terms of what the trainers, SPEs, technical directors, and our fellow lab mates expect of us. To be honest, most of the expectations were really just advice, like “ask questions.” In other words, nothing you’d be fired for or reprimanded for – if you don’t ask questions but do your job well, is anyone really going to care?

We switch over to the 9-80 schedule next week. For anyone who doesn’t know, that means working 8 nine hour days and one eight hour day per bi-week, with one of the Fridays off. Definitely not a bad deal.

We had our first lecture on 35 USC 101 today. I thought it was fairly interesting. Here are the highlights:

What is patentable under 101?

Any new and useful process, material composition, machine, manufacture, or improvement.

So when doing a 101 check, how do you ascertain that the application meets the requirements? Well, you go through it claim by claim, and check which type of patentable invention it might be. If the claim says “a method to,” it is probably a process. If it says “a system comprising,” it is probably a machine. If it says “a product” it is probably an article of manufacture. We didn’t see any material composition examples, so I can’t speak to that one.

Next, we get back to the whole “new and useful” thing that fouled so many people up before. Well, we pretty much ignored the “new” part of it, since novelty is covered under 102. Instead, we talked about utility.

How do you ascertain utility?

The utility of the machine must be specific, substantial, and credible.

So what does this mean? “Specific” means specific to the class. You can’t claim a new widget  whose only usefulness is to do exactly what other widgets do. Not that you can’t claim a new widget that does the same thing faster, say, than existing widgets. Or that has some other benefit. But you can’t say the invention is useful because it does what every other invention in its class does, unless you are improving upon that result somehow.

Substantial means that the invention has a “real-world” use. Gosh, that’s vague, isn’t it? It seems that this restriction is there to prevent inventors from coming up with a widget that doesn’t have any specific application yet, but might eventually have an application after further research is done.

Credible is easy. No violations of the laws of nature. I imagine that if you’re clever enough to break a law of nature, presenting a working model of your invention would secure you the patent – and invalidate a “law of nature” in the process.

We also covered judicial exceptions, but I don’t really feel like going into it right now… this has been a long enough post as it is.

~Relativity

I’m just going to comment on one of the things related to yesterday’s intro to intellectual property and patents.

One point that came up was that one of the benefits of having a patent system is quid pro quo. That is, we the people grant you the inventor exclusive rights to the production and use of your invention in return for the knowledge of how to construct it. We get the knowledge, you get a temporary monopoly.

This got me thinking – isn’t it the same way with copyrights? Or rather, shouldn’t it be? Look at Disney – and this is a tired argument, but I’ll repeat it – who has certainly profited from taking from the public domain (Cinderella, Sleeping Beauty, Snow White) but who lobbies Congress to continually extend the limits of copyright so that they never have to release anything to the public. Of course, no one can use their creations to create secondary works derived from same, which means that they are essentially being granted a monopoly on their creation forever. The sad thing is that it is easy to understand why patents should be term limited, but people don’t seem to feel the same way about copyrights. Is it because of some prejudice against scientific advance, or is it because people use inventions and feel strongly enough about their usefulness that they would not tolerate such an infinite extension of the monopoly?

~Relativity

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.

Today went by fairly quickly. We checked our computer accounts to make sure all the requisite tools were there, and we prepared ourselves for the interview. Most of that preparation was really just rehashing arguments we’d had the day before and had either left unresolved or changed our minds about while mulling them over at night.

The interview was at one, and our attorney found flaws in most of what we’d done, which was to be expected. I think we all appreciated the experience and learned a great deal from someone with so much experience, and who had not lost enthusiasm for the job after so many years. I could say many more positive things about the experience, but I will refrain since I think revealing anything more might expose identities.

Tomorrow we will have our first lecture (and quiz). I’m looking forward to it!

~Relativity

We had a brief overview of what we’re going to be learning over the next eight months. I must be a law geek at heart, because I was really salivating to get into it all.

Instead, however, we did some team building exercises. The old “Make a shield/coat of arms that…” thing. I was surprised that we were doing it, and I do have to say that I wanted to get into some real learning. A lot of places do icebreakers/team-builders, though, so I suppose it isn’t too odd.

Later on, however, we got our first “examination project.” We were given some basic information on 35 USC 101,102, 103, and 112, along with an abandoned patent and some possible prior art patents. The goal was to have us work as teams and to “struggle.” That is, with no guidance from our trainers, we were supposed to try to interpret the statutes. And yes, one of the stated objectives was that we would observe that different people could read the same words differently, which was certainly evident.

I have to say, I really, really enjoyed it. This is why I’m here… to learn the law and procedures, and to become as good of a patent examiner as I can be. It is fun to read patents, examine the language carefully, and see how the law would apply. I don’t know why… it just is.

Anyway, tomorrow we will have to defend our “office actions” in an attorney interview. Should be fun.

~Relativity

I don’t know if/when anyone will read this blog, but I’ll be clear up front: The views expressed here are in no way to be construed to represent the opinions of the USPTO or any state, federal, or local government agency.

This is not a dirt-slinging blog.  When I was researching the position, I didn’t find much about the patent academy itself.  The academy didn’t even start until 2006, so it is understandable that there isn’t a whole lot of information available.  My goal is just to share a glimpse of what life in the academy is like.

I will not name names.  I will not insult, impugn, or otherwise malign the USPTO or its policies.  I am excited by this job, and if I reach a moment of disillusionment that would tempt me to write something inappropriate, the blog will simply go silent.

~Relativity

Call me old-fashioned, but I felt a stirring in my breast when I took the Oath of Office.

I don’t know how many people take it seriously, or how many people think of themselves as really being public servants, but it is true.  We are here to uphold the Constitution.  For many people, it is only an old piece of parchment with no claim to greatness or Philosophical knowledge than any other.  I make no secret of the fact that I think the Constitution represents a sacred moment in the history of the world.  But I digress.

Day 1: Today was mostly filling out paperwork.  The assumption seems to be that most people won’t have come to the orientation session having properly filled out their paperwork.  We covered health care options.  Ethics, EEO, etc.  Really standard fare for large companies, at least in my experience.  Tomorrow we will begin to learn about our jobs as patent examiners, which is very exciting to me; I have been reading blogs, fora, and any other information I could get my hands on to learn about the position and what it entails.  In that sense, today was a bit anticlimactic… I want to get to the meat.  But I understand that paperwork has to be done.

I do have to say that I am not designed to get up this early!

~Relativity