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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  • 161 comments
My spouse, a CPA, wasn't taught and didn't know how to use a 10-key entering her first job.

Many hours were spent at home learning how to use the dang thing proficiently.

~signed

Don't know if that substantiates the method or the madness!

Anonymous

January 8 2008, 05:06:26 UTC 10 years ago

Offtopic but did you notice that the USPTO pay raise was only 2.5% despite the fact that the rest of the DC area got a 4.49% pay raise? http://www.washingtonpost.com/wp-dyn/content/article/2008/01/06/AR2008010601782_pf.html

I thought POPA sued the PTO (and won) so they'd start giving us locality pay.

Since there's no place for examiner's to talk anonymously, figured I'd leave a message here.

Anonymous

January 8 2008, 14:43:08 UTC 10 years ago

we specifically do not get locality pay because we are on a special rate table. If you notice, on the OPM site, our pay table locality is categorized as "Nationwide." If it were not, then hotelers would be subject to different locality pay and would likely be paid less. We are still paid quite a bit more than any other GS employees, even without locality pay.

And the pay raise was 3.5%, not 2.5%. I know the page you're talking about that the 2.5% figure comes from, but it's out of date.

-MM

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January 8 2008, 16:15:00 UTC 10 years ago

IMHO, (as a former examiner), the production system bastardizes examination. As discussed in JPE's note above, it provides incentives for the examiners to take shortcuts, to maintain legally and technically unsupportable positions and find ways to game the system.

The production system needs to be either overhauled or abandoned completely, relying instead on the examiners' professionalism to do their jobs.

bierbelly

Anonymous

January 8 2008, 16:22:13 UTC 10 years ago

Out of curosity, how is production calculated at the EPO? Many attorneys seem to think that the EPO does a better job with searches and such--maybe their production system should be adopted in the US.

The EPO went on strike last year

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If an Examiner - a fairly new one, we suspect - was caught knocking off another examiner's office action, word for word, typo for typo (where the claims of the knocked-off office action relate to the same species, but with different features, e.g. a hut made of sticks instead of stones), would there be any ramifications? We received an action with a provisional 101 and a VERY CONFUSING 103. At the last minute, I checked the file history of the case cited in the provisional 101 and found the exact office action written by a different examiner 4 months earlier. Our Examiner changed the pertinent data (serial no., etc.), but did not even bother to revise the rest of the action. We attempted to contact the primary, but received no response. We had little choice except to respond and to request no more plagiary. But, is this a taught thing? Is it frowned upon? Are there any ramifications?

If anything, this episode taught me that I have to check every little detail of any office action that comes in - are non-patent docs cited? are they attached? Does any 101 actually cite something real, or is it simply citing numbers? Does the office action actually read on our claims? In the past month (since the knock-off action), I've found many mistakes in office actions. And within a day of their receipt, we are calling the examiners and having them reissued. It just seems that "quality" is not something you can teach someone who really doesn't care or who is so overwhelmed that they cannot comprehend how to do a quality job.
Examiners are taught (at least the well-trained ones are) to check the IFW of every application they examine for related apps that may have office actions written on them; same goes for PGPubs that don't qualify as prior art... We are NOT taught to use the exact same office action word for word, especially if the claims are not the same. If the claims were exactly the same, I could see justification for just using the old office action; there's no plagiarism here, all office actions are considered opinions of the office, hence they are all by the same "author." Even if it could be considered "plagiarism" I don't think it would matter in this instance. The real problem is that the office action you recieved was irrelevant to your claims. That's someone playing games to boost his production (ignorant of the fact that his workflow will eventually suffer), and being very derelict in his duty. You should report that to his SPE (not the primary on the case). If you don't get a response from the SPE, take it up the chain to the group director. I guarantee that examiner will not be doing that anymore after you do so.

-MM

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Plagiarism

just_n_examiner

10 years ago

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Anonymous

January 8 2008, 18:04:31 UTC 10 years ago

When I began as an examiner, in 1982, we had the initial two week PEIT, as you describe, then began examining in our art unit. Then about 8 months later, we went through Patent Academy. As best I recall, Academy was about six weeks or so, half-days. A couple of years later they revised Academy so that it was conducted in phases (session 1, then a break of a couple of months, then session 2, etc.).

I think that approach was far superior to the way it is done now. It is much easier to learn a job by actually doing it, in an apprenticeship or internship fashion, rather than having months of lectures and simulated prosecution exercises, as I understand the process to be now. I wouldn't be surprised if the present training model contributes to the high examiner turnover during the first year, because of sheer boredom.

Anonymous

January 8 2008, 18:10:25 UTC 10 years ago

the way it's done now (I finished the training academy in september), we begin production about a month into the training academy. We begin to be evaluated on our production about two or three months after that. The entire time we also have lectures/exercises etc. that we get other time for.

I liked this system because it eased us into production and let us get a pipeline of cases started before the pressure really set in.

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January 9 2008, 00:03:05 UTC 10 years ago

Attorneys, take some advice from this examiner. Do not let examiners get away with crappy work, especially new ones. That first year is when it's easiest to get rid of examiners for whatever reason. If you keep filing RCE's when they're doing crappy work when you should instead be filing appeals or calling to complain to their SPE's about their work, then it's telling them that there's nothing wrong with their work and they can keep doing what they're doing. If these crappy examiners are keeping up with production because you're willing to put up with shoddy work, then the SPE's can't fire them and they will stick around.

I've been around long enough now that my SPE is letting me help review some office actions. If it was up to me, some of these guys wouldn't have been retained after the first year, yet they're sticking around because they're meeting production. Heck, some of these guys I wouldn't have even hired. Some of what I've reviewed are barely understandable and barely in English. The crappy ones also do not care enough to make their office action better even after receiving feedback on what needs to be fix and how to fix it. The attorneys didn't argue that part of the office action last time, so why should they take the time to fix what I'm saying needs fixing was more or less the response I got from one examiner--this after having to reopen after an appeal brief!

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You Cannot Petition the Lord with Prayer!

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I NEED A MEETING WITH OBAMA!

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January 9 2008, 21:05:26 UTC 10 years ago

Let me provide a real world example of what we patent attorneys face.

First OA; I responded with no amendments, arguing the 103 rejection as being incorrect because not all the claimed elements were present in the combination of references. Received a FOA. Submitted Request for Reconsideration and went into more detail countering the examiner's interpretation of the claim language as evidenced in the FAO; was denied in AA. No real issues to resolve in further prosecution, so I appealed. Eventually application was reopened for further prosecution, and I received an OA with another 103 rejection citing new art. My response was based on (1) not all claimed elements found in the combination, (2) combination of non-analagous art, and (3) no basis given for motivation to combine references. Received Notice of Allowance in return.

Here is what I found significant: the claims as originally filed, that is, never amended, were what were eventually allowed. (Patent term adjustment of 946 days).

Why on earth should an applicant have to file an appeal to get someone who knows what they are doing to actually sit down and read the claims, rejections, and arguments?

Anonymous

January 9 2008, 21:24:15 UTC 10 years ago

Sounds to me like the first time you just argued claimed elements found in the combination, and the second time you argued that AND justification of the combination... Perhaps you just didn't hit the right argument till the second time around? Granted reopening prosecution upon appeal is an indication that the rejection was shaky to begin with but still... it doesn't seem like it was too ridiculous in that instance for the claims to end up being allowed after appeal, reopening, and further prosecution, all without amendment, if there were new arguments to consider...

-MM

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January 10 2008, 22:05:15 UTC 10 years ago

I'm definitely getting trained by lawyers. My SPE doesn't look at cases until count Monday.

My problem is trying to clean up some of the earlier junk I sent out. This has led me to send out a few weak finals (with some subject matter allowed that really shouldn't be allowed). I've only sent out one terrible final, but I don't feel bad about it because the attorney said the reference had a bad date when in fact it did not.

Anonymous

January 11 2008, 16:11:08 UTC 10 years ago

The only thing worse than not allowing a case that should be allowed is allowing a case that shouldn't be. I want a STRONG examination, not a weak examination that doesn't use proper reasoning and poor references. As it is, I don't get a strong examination until RCE time, and even then I sometimes don't.

Am I asking for too much? As it is, I get a crappy 102 rejection first time around, and my successful argument against that leads only to a 103 final. Assuming the request for reconsideration doesn't work, but the examiner has gotten a little more specific in the AA so that now I know more of what is bothering the examiner, I can file an RCE if I have to make an amendment. The case is now at the stage where it should have been after initial examination and response, if the examination and first office action had been what they are supposed to be.

And then the PTO wants to make it difficult for me to get a second RCE?

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seriously

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January 13 2008, 22:26:12 UTC 10 years ago

It's like he said above, if you only argued then they can't go final unless they find your arguments unconvincing and stay with their rejection.

I recall fondly my tenure as an examiner (90-92). We used to have a saying "If they don't like what we're doing, let them go someplace else to get a patent". Then, of course, we snickered.

What if there actually were another place to get a patent? After all, there is now fierce competition for mail services, whereas the Post Office was once the only game in town. Postal service has gotten better as a result. Should the PTO face competition from the private sector?

bierbelly
no matter how bad any government agency may be, I cannot stomach the idea of a private entity controlling access to a constitutional right.

-MM

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Training materials for applying KSR to business methods are posted here http://www.patenthawk.com/blog_docs/BM_KRS%20training%20_4_.pdf on Patent Hawk.

Looks like it's well done.
Anyone seen successful use of petitions to challenge final rejections as premature? The procedure is there, but it looks unusable because filing a petition is not considered a response and does not extend the deadline for a response.

Anonymous

March 19 2016, 09:06:20 UTC 1 year ago

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