just_n_examiner (just_n_examiner) wrote,
just_n_examiner
just_n_examiner

Who Trains Whom

One of the most pervasive subjects [complaints?] that I see discussed regarding patent examination is the quality [or lack thereof] of that examination.

In light of that, I thought that the training process might be a subject worth talking about.

When I started at the Office, training began with two weeks of PEIT (Patent Examiner's Initial Training). This was some very basic training. Remember, examiners (for the most part) start off with absolutely no knowledge of the patent system, patent law, nothing. You were given ten 8-hour days worth of training, and then sent back to your art unit to pick up a new application and start examining. Thrown to the wolves, as it were. We had more detailed follow-up training (IPP - Introduction to Practice and Procedures) throughout the rest of our first year on the job. This is the best documentation I could find on that process.

I don't actually think this was a bad way to do patent training, to tell the truth (or at least it wasn't at the time, when the Office wasn't hiring at such a rapid pace). It's one thing to be taught how to do something, but it's quite another to actually do it yourself. Kind of 'patent immersion learning', similar to learning a language; if you expect to retain anything you're taught over the long haul, you need to actually use it.

When you are learning a language through immersion learning, you are more or less being 'trained' by the people with whom you speak, the people who have long ago learned the language, and who use it every day. Your teachers in school have given you the basics, but it is those 'immersion trainers' who give you the training that allows you to 'really know' how to speak the language.

Unsurprisingly, it works pretty much the same way for examiners. And guess who plays the role of the immersion trainers? It is the patent agents and attorneys that play this very significant role in the training of new examiners.

The 'formal' training that examiners receive (formerly PEIT, now today's patent academy) teaches examiners how to do a more-or-less perfect job of examination. They are teaching, of course, to examine applications according to the guidelines set forth in the MPEP.

Once set loose to examine, though, a new examiner has to work within the bounds of the production system. Now they are faced with the reality of having to examine as they've been taught (consistent with the MPEP), but to do it rapidly enough to conform to production standards. Since imposing time constraints means that examination simply cannot be perfect, new examiners have to figure out what facets of examination are more important, and which ones are less important.

Junior examiners will get much input and advice on this subject from the person signing their cases, either a primary examiner or a SPE. The primary source of this information, however, is derived from the experience they gain answering the amendments and arguments submitted by attorneys and agents.

One method of saving time for examiners is to take 'shortcuts' by stretching a piece of art farther than it will reasonably support.

When this results in an examiner being forced to write a second (or third, etc.) non-final rejection, or withdraw finality and reopen prosecution in response to amendments and arguments, this teaches the examiner something about how they've conducted their examination (and maybe how they should have conducted it), and they adjust accordingly.

Conversely, when an examiner takes 'shortcuts' and doesn't have to face any consequences, or worse yet gets rewarded for it, well that teaches the examiner a very different lesson.

What's that lesson? Well, maybe that their primary, who told them not to blow off the dependent claims doesn't know what they're talking about, because attorneys don't care about the rejections of dependent claims. It must be so, since they didn't complain about them.

Or, perhaps that their primary who has told them in the past to withdraw finality and reopen prosecution is a moron, because 9 times out of ten when they've argued final rejections, they've gotten an RCE out of it.

Worse, a new examiner can be given the impression that they are doing a bang-up job when they're not. I once spoke with a junior examiner that had recently gotten their first RCE. Their comment to me: "I didn't think my art was that good, but my arguments must have been pretty convincing; why else would they have filed an RCE?"

We all know that practitioners are going to prosecute their client's applications in whatever way they feel will best serve their clients' interests. Sometimes, that means that they decide to file an RCE instead of filing an appeal. It only makes sense. I certainly don't expect attorneys and agents to do any different, and in fact it would be unethical for them to do anything not in the best interests of their clients.

Since the way in which attorneys and agents prosecute applications has a great affect on the counts that an examiner receives, though, it will certainly have an effect on the way examiners do their job.
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