Today was our graduation. Congressman Conyers was kind enough to attend and speak at our ceremony, as did Under Secretary Dudas and Deputy Under Secretary Peterlin.
Congressman Conyers was presented with an honorary certificate of completion of the Patent Training Academy. I may add some more details to this post later, but it isn’t as though there was new information conveyed.
~Relativity
JPE has an interesting post about how examiners are really trained… via the attorneys and agents who respond to our office actions. I don’t have quite as much to say on the matter as JPE does, but I figured I would contribute my little bit of experience to the discussion.
The first thing I want to address, however, is JPE’s suggestion that the burdens of the production system cause quality to go down. I’m not sure this is necessarily the case. To a large extent, it depends on the trainers we initially have and the feedback we get during the training process. For some students in the Academy, this is the most in-depth and detailed analysis of their Office Actions that they will ever receive from a supervisor. Other trainers really only look for formal matters and leave the “training” to the attorneys. Because lectures are addressed to students in all arts, we tend to learn the material in the abstract. While we were given some exercises specific to our arts, we have to learn to apply what we’ve learned through writing real Office Actions. So I’m not sure that its necessarily the production system per se that makes doing quality work difficult; it’s trying to figure out how to apply all this stuff to claims and limitations that are quite unlike what we’ve seen in lecture.
In general, I would say that students judge the quality of their actions (or lack thereof) by a few different standards:
I’ll just say a few words about the last one, tone. Some responses are very - shall we say - firm about the job the examiner has done. Many new examiners are easily worried by the arguments they receive from attorneys, and if the tone is harsh (even if complying with Rule 3), they question whether or not their actions are reasonable. But there’s a problem: the examiner in training will then take that application to someone else (trainer, TA, primary, SPE, etc) who may then tell the examiner that the attorney’s arguments are incorrect. If the other examiner’s analysis seems reasonable, the new examiner now feels as though he has been bullied. So now, he’s less likely to respond to that severe tone when he comes across it in the future.
Good examiners welcome good arguments, of course. It helps us to do our jobs better, and sometimes teaches us to never do something the way we did it before. Unnecessarily combative arguments can often have the reverse of the desired effect.
I don’t mean to imply that such replies are common or predominant. They represent a small percentage of the replies I receive. And while the right answer is to always treat each application on its merits, and to do the most legally correct job possible, it is also true that examiners are only human.
We had the proficiency exam today. I haven’t had any posts in a while, mainly because we haven’t been having lectures. The move to the TC is soon, however (the week of the 7th), and I should have more to report then.
~Relativity
Today we had an amendment workshop, in which we got some practice materials (for those of us who haven’t yet responded to amendments).
Today we had another MPEP preparatory session, although this one was more general and aimed at improving our test taking ability overall. We went over some questions, discussed answers, and heard about strategies that would help us locate the answers more quickly when we actually take the proficiency exam. The exam is scheduled for late December, now, before the holiday.
~Relativity
Today was part two of our 131 affidavit lectures. One of the things that strikes me as incredibly interesting about the lectures on 131s is that it doesn’t seem to be straightforward. Perhaps I should explain.
When we first started learning about 102 rejections, one of the important points that was drilled in was that 102(b) is a statutory bar, whereas 102(a) and (e) can be overcome by swearing behind the reference (submitting an affidavit saying that the invention was actually conceived/created before the 102 reference). It was a simplified explanation, as was necessary to convey the important points to us. However, I always felt like there was an implied “just” right before the phrase “swearing behind.” It wasn’t until I was reading another forum or blog, and someone mentioned that it wasn’t, in fact, so easy to swear behind a reference that I started to wonder if my assumption was incorrect. Apparently it was.
Towards the end of the lecture today, we got some tips on avoiding 131 affidavits. Why avoid them? They cost lots of money for applicant. They are non-trivial to file. Our presenter pointed out that when the examiner cites only a 102(e) or (a) reference in the rejection, the implication is that the reference is the best art available, and that the date is what stands in the way of patentability. It would be… frustrating… to applicant to have them spend lots of money on the 131, only to come back with a 102(b) or well-reasoned 103 indicating that there was not, in fact, allowable subject matter.
Thanks for the comments on the last post, btw. I do appreciate the insights!
~Relativity
Note: Lay-person explanation below.
Note 2: Spam got so bad in the comments that I had to move to new spam-blocking software. If your comments aren’t being posted in a timely fashion, send me an email and let me know; I’ll try to find your comment and unblock it. If it’s a regular problem, I’ll try to find another solution.
We had a lecture on Appeal Briefs today. It was especially interesting in light of the proposed rules package (as mentioned on just-n-examiner’s blog).
To the presenter (who asked): Yes, this was the class with the blogger, yes, I was there today, and yes, you did a fine job presenting. Thank you for taking the time out to speak with us. I haven’t mentioned it in a while, but I still do appreciate the work of the speakers who come to talk to us. For the most part, they are energetic people who seem to enjoy both teaching and the subject matter.
I think we went into just enough detail for an intro to the topic: we covered the periods for reply, what is required and optional for an appeal brief, and the (very) basics of the Examiner’s Answer. Since writing an Examiner’s Answer is going to be so far off into the future for most of us, it probably wouldn’t make sense to go into to too much more detail than we did today.
I do have a question about Pre-Appeal Briefs for the practitioners out there: I see a lot of comments on JPE’s site about the cost of appeal briefs, only to have examiner’s reopen prosecution after the brief has been filed. In our class, we discussed the Pre-Appeal Brief option, which seems to allow applicants to provide a very short pre-appeal brief which would be reviewed by a panel to see if prosecution should be reopened, or if the case should go to the board. Is this option used? Do practitioners find it to be effective? From my naive perspective, it makes me wonder why there’s still a problem with examiners reopening prosecution after an appeal brief.
Layperson explanation: When an examiner rejects claims twice, applicants can appeal to the Board of Patent Appeals and Interferences. This is applicant’s first avenue for judicial relief if applicant feels that the Office is not properly rejecting their claims. When applicants want to appeal, they are required to submit an Appeal Brief, which is very, very costly for applicant. Examiners then must write an Examiner’s Answer in reply to the Appeal Brief.
~Relativity
We had two lectures today, both from representatives of the BPAI (Board of Patent Appeals and Interferences).
The first lecture dealt with interferences. The easiest way to sum it up would be “find someone who knows what they’re doing.” Basically, interferences fall into that territory where two applications or an application and a patent are claiming the same invention, but the prior application/patent cannot be used as art against the other. They are very rare. They are complicated. I won’t even begin to pretend to understand what goes on, there. The three most important things I pulled from the lecture are: the application must otherwise be in condition for allowance, get help from an interference specialist in your TC, and the BPAI takes care of the dirty work.
The second lecture concerned how to create better office actions, with a focus on making prosecution understandable to whoever might be reading the file file wrapper, including BPAI judges.
We also had a small “ice cream social” this afternoon, which was nice.
~Relativity
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