You will use your legal and technical ability to assess patent applications. Someone applies for a patent when he or she has an invention that they want to protect and ensure that no one else can use or sell.
While assessing an application, you will need to ensure that the invention is new and not an adjustment or small alteration of a prior invention that is already protected by a patent. You will conduct research utilizing a variety of databases and reading through literature to prepare a report with your opinion.
The report, which will contain your opinion as well as the literature and other search results, will then be provided to either the patent applicant or a patent attorney, who will then determine whether or not to proceed to the second stage of the application process. The EPO, however, follows a grading system. EPO employees may also receive a relocation allowance as well as other benefits. At the IPO, the work week is 37 hours. However, the IPO, does, in fact, allow its employees a more flexible schedule, and employees can set their daily work schedules anytime between the hours of 5 a.
The EPO, also flexible in its work schedule, requires its employees to work 40 hours a week. You cannot engage in freelance work or any other self-employment while working as a patent examiner.
Traveling may be required to specific locations in order to see the invention you are going to be examining and have a better idea of what it does. Patent examiners are usually never permitted to allow anything through the first time around.
Once the examiner declines the application, the applicant then has to state his or her reason as to why the examiner made the wrong decision. The examiner will then review the applicant's response to the rejection. The patent examiner will likely want to obtain advice from a qualified patent attorney who can better assess the situation, as an attorney has more familiarly and knowledge surrounding the applicable patent laws.
You'll also want to keep in mind that emotions tend to get in the way when an applicant is denied; keep emotions out of the way since this is a job in which you can only look at the facts.
If the invention itself does not satisfy the criteria for patent protection , then it must be rejected. That is why a dialogue occurs between you, the applicant, and the patent attorney in order to make an informed decision. Because the applications are randomly assigned, an applicant has no way of knowing if the application itself is going to be assessed and examined thoroughly or rather quickly.
However, with that being said, patent examiners receive two credits for each and every application they complete. Technical differentiation from prior art is what the examiner is looking for. Believe it or not. If all you have a legal arguments, the examiner loses all respect for you. The truth hurts. You speak like a bureaucrat — as if making the examiners job is the de facto primary driver. Quite in fact, leveraging DIS -ease is every bit as viable an option as the ease that you would desire.
Evan Pert — as patent attorneys our job is to get our clients reasonable claim scope that actually protects their inventions. We do not get paid to get respect from examiners.
Can you imagine an attorney saying the following to a client? Maybe we should narrow the claims to get a patent, even though it is too narrow to provide any actual protection with respect to your competitors.
If so, did you continue examining applications by ignoring the same legal arguments that resulted in you losing the appeal? If you answered yes to both of the above, then your opinion is worthless.
I have won dozens of appeals with legal arguments, and I continue to make them to examiners. If the examiner is blatantly wrong legally, and the client does not want to narrow the claims, I keep appealing and winning, getting my clients broader protection than I would by getting examiners to like or respect me.
My job is to ensure my client gets the protection they are allowed under the law, not to make the examiner feel better about themselves or to make their job easier.
To the extent these interests align, I do everything I can to help the examiner i. My first examiner states my application is patentable in the telephone interview and then I mysteriously get a new examiner. Is that MPEP protocol? You are definitely right that legal arguments should be used and are part of the stick. It all comes down to whether or not you have recourse or not and we still do.
There is a misconception in some of these comments. So it is law to an examiner and suggestions to the patent applicant.
Thank you all for your patent attorney insights. Luckily, some cats and dogs get along. I find it surprising to see negative e-motion in comments to me. Legal arguments can indeed be logical as we all must know. In my opinion, as nonsensical as it may sound, technical arguments are better for winning over the PTO, as conveyed in the article. I did not lose any appeal on legal arguments and worked well with practitioners talking about differing technicalities of the claims over prior art, rather than laws, to arrive at a claim amendment agreeable to the client.
If a practioner obtains an allowance with legal arguments alone, it means the examiner failed to find adequate prior art for the rejection… So go for it any way you want. If your client wants prosecution to move as smooth and quickly as possible, though, the article gives good advice. If, however, you need or want to make your money unethically from purposeful obfuscation, adversity and conflict throughout prosecution, creating more billing for your client, then drag it out and ignorantly or selfishly consider the article as drivel.
If you see a comment missing, please refresh your browser, or wait a while — sometimes they need to be manually approved before posting. If your comment included entirely irrelevant personal or potentially libelous attacks, racist or sexist remarks, it may have been removed if I caught it.
Gene is not hovering and censoring comments — I am in charge of this and I am not a lawyer and have zero biases toward examiners versus lawyers, etc. So when in doubt, refresh!! Did you ever admit in an Office Action twice that the claims solved a problem of 6 decades that has escaped every working professional and experts, then continue the rejection by citing a fictitious process and ignoring the evidence on the official record?
The process you state is a process that has not been followed in my prosecution. I find the process very disturbing. My attorney calls the rejection arguments non-responsive.
Evan Pert — thank you for taking the time to respond. While all patent attorneys should very well understand that technical arguments should always be the number one option, these types of legal arguments often come into play when there are no convincing technical arguments. If you have never lost an appeal on legal arguments, then you probably did have good enough prior art that the above types of legal arguments did not usually apply to your rejections.
You also then do not seem to fit the category of unreasonable examiner that relies on speculative art and improper hindsight bias. Your views on what is obvious might align closely with the PTAB, but there are tons of examiners out there than have heightened legal standards, and I do not want or need their respect.
Nobody on this message board mentioned anything deserving of that. I take pride in fast resolution of cases with claims that are as broad as reasonably possible, and legal arguments and appeals are a necessary tool to achieve this. I very very very rarely file 2 RCEs. I interview with Examiners and draft dependent claims or varying scope to avoid a 2nd RCE — if I have not reached agreement with the Examiner at that point, I am confident I will at least win on some good dependent claims, and I appeal.
I never drag on prosecution. There are multiple layers that patent attorneys have to consider. An easy way to tell if your examiner is a junior examiner is whether there are two signatures or one signature on the last page of the action. One signature generally means your examiner is a primary examiner with signatory authority.
Two signatures generally means your examiner is a junior examiner and a primary or supervisory examiner also had to sign off on the action. That is simply NOT your call to make. You are charged with evaluating an application under the law. If you are an examiner, I would suggest that you talk to your supervisor about your improper bias. Unfortunately, in the way examiners are reviewed and evaluated it is the proper bias for examiners to have.
They suffer no negative consequences for being wrong when rejecting a claim that should not be rejected. Arcturius — I have mentioned appealing in interviews and had examiners explicitly tell me they do not want to go to appeal, so it certainly works with some examiners.
And appealing very frequently causes examiners to negotiate allowable subject matter in a manner they previously would not. I keep track of appeal outcomes — for the last 20 of my appeals that have been resolved not counting the full reversal I just received today — 13 of the 20 cases have resulted in the Examiner pulling the rejection, and 11 of those 13 have resulted in an immediate allowance.
So yes, contrary to what you assert, examiners act differently when an appeal is filed. Of the remaining 7, 6 of the 7 resulted in a reversal of all or a majority of the rejections, and the other 1 resulted in a reversal of a dependent claim — which the client was happy with. With respect to being a meme to the examiner — do you think a patent attorney cares? I care about the 20 out of 20 positive results for my clients.
I have no doubt that patent attorneys and their clients have cracked jokes at your expense. Do you care? I would not think so. If, however, you need or want to make your counts unethically from purposeful obfuscation, adversity and conflict throughout prosecution, creating more expense for the applicant, then try all the shenanigans you want. But I, and other good practitioners, know that when appealed, the game playing examiners fold like cheap suits.
Sounds like my call to make. Examiners are BS filterers. There are just too many instances of Examiners repeating the same mistakes over and over and over. During an After-Final interview with an Examiner and his SPE, we were discussing a rejection with a particularly flawed rationale.
As was pointed out, there are no negative consequences for an Examiner when they are reversed by the PTAB. Sometimes, there is an immediate change in the tone of the conservation as the Examiner realizes that you are someone who has stood in their shoes at one point. Anon 41, The PTO is currently conducting training that will be soon implemented. The purpose of which is to protect examiners from adversarial practitioners like yourself.
And yes, part of my job is to guard the gates from nefarious actors like you. They are not repeating the same mistakes over and over. There are many Examiners, however, who might change their ways if the Office placed even minimal value on improving the quality of rejections by doing a post-mortem on why the PTAB reversed the Examiner, and the lessons the Examiner needs to take away from the reversal.
And beyond lazy. But sends them up anyway. But the Board reversed. Never had any discussions during my time at the PTO on resolving the factual inquiry into the level of ordinary skill in the art. The case law says no explicit findings necessary if the applied prior art reflects an appropriate level. It is something I argue in every non-enablement rejection I get.
Chore-Time Equipment, Inc. Cumberland Corp. See also Okajima v. Bourdeau, F. Chore-Time involved a patent litigation, and not patent prosecution, and reversible error would require all the time, trouble, judicial resources, and effort of a trial being wasted because the case would need to be re-tried. The Examiner is required to demonstrate that the prior art reflects an appropriate level of skill in the art.
However, an explicit analysis as required by KSR; see MPEP III of how the prior art cited by the Examiner in the rejections allegedly reflects an appropriate level of skill in the art is, in my experience, never made by Examiners in their Office Actions. The Examiner has the initial burden of proof in demonstrating that the prior art cited by the Examiner reflects an appropriate level of skill in the art. To my knowledge, Examiners are not trained by the USPTO to explain why each of the prior art cited in the rejections allegedly reflects an appropriate level of skill.
Given the Fed. More importantly, the level of ordinary skill is the same regardless of which section is being applied. I agree it is a long shot. The Examiner got reversed, and then allowed the case so that was the end of it.
I also agree there are applications where skill level determination is not really necessary in the obviousness context because the level of skill in that area is generally very high e. It just goes to show what a farce skill level determination as practiced by the USPTO can be since the Examiner is supposed to already know the level of skill in the art when it comes to issues.
If there are only rejections, and no prior art cited in rejections, how is the Examiner supposed to have determined the level of ordinary skill implicitly? As I recall, there was a case that said the Examiner had to be consistent with the level of ordinary skill throughout the Office Action. To the examiners and former examiners above, particularly those that remote work: To what extent do you consult with other examiners in your art unit?
For example, if your SPE gives you feedback on a new priority in examination e. Maybe that training entails that you do your job correctly in order to avoid provoking adversarial and nefarious practitioners…. The protection that examiners need is from patent troll attorneys like you. You use buzz words — and most likely use them incorrectly, which makes what you are trying to say to be incomprehensible.
Is this training if the nature of training examiners to properly use legal terminology and terms of art so that the examiners can actually express themselves?
Any examiner not considering those types of arguments are bad examiners, period. Personally, I feel that not being a legal expert actually makes it harder to reject something e. For example, suppose an examiner gets 1 count for a first action and 1 count for later allowing the case, and this took 20 hours. Of course, the calculation done biweekly involves multiple cases, where the number of counts for percent production is based on the hours worked in that bi-week period.
If the examiner feels we are wasting his or her time by being unprepared, an overall negative impression may result, which is unhelpful in advancing our rationale for patentability. On the other hand, we can be prepared and the interview goes quickly and effectively. The examiner is happy as they get an extra hour of time and has also helped advance the application. Years ago, a Restriction Requirement was not afforded any counts, but they were still issued to greatly reduce the time required to provide the first action on the merits where the examiner does earn counts.
Thus, if a case can be restricted, many examiners will promptly do so to save time. This can be a question of balancing time. In other words, does the amount of time to issue a restriction take longer than the amount of time to examine multiple inventions? If so, many examiners will just examine the entire case. We often see this where we have apparatus claims and method claims tied to the apparatus. This is one area where the examiner has quite a bit of discretion so it can be difficult to prevail against restrictions when they are proper.
Years ago, the examiner did not receive any time allotment or incentive to consider a response after a final rejection.
Nowadays, we have the After-Final Consideration Pilot AFCP program , where examiners are given additional hours on their case allotment to consider the response. Many examiners appear to like this program as it gives them time to review responses, conduct an interview, and try to get to an allowance. Even when we do not get an allowance, we will receive an Advisory Action that may include more detailed information about why our after-final response was not good enough.
We, therefore, like to file any after-final responses under this program whenever applicable. We have even called examiners to tell them we are filing a response under the AFCP program and the amendments are simply to get allowance. Examiners seem to appreciate this, as we could have filed the response without the AFCP program and still had it entered since it provides allowable claims. By filing under the program, however, we give the examiner the extra time allotment.
This also builds stronger relationships with the examiners which may come in handy with any continuing applications. This provides the examiner with additional motivation to work out allowable subject matter. However, an RCE may still be necessary in some cases.
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