Prosecution Insights Gleaned from a Review of Recent Patent Examiner Training

• Date: 01 May 2018

Published in Landslide® magazine, Volume 10, Number 5 , a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2018 by the American Bar Association. Reproduced with permission. All rights reserved.

This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.

Prosecution

Insights Gleaned

from a Review

of Recent Patent

Examiner Training

By Jessica Harrison

Published in Landslide® magazine, Volume 10, Number 5, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2018 by the American Bar Association. Reproduced with permission. All rights reserved.

This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.

In my 24 years of experience inside the U.S. Patent and

Trademark Ofce (USPTO) and several years practic-

ing as an outside patent attorney, it is apparent to me

that practitioners can benet from a better understand-

ing of patent examiner culture and training, and its

inuence on prosecution. In my current practice, practi-

tioners frequently ask me to explain an action anomaly

or the secret to compelling an examiner’s action or

inaction. My responses frequently point to examiner cul-

ture and training. This article seeks to increase practitioner

understanding of examiner culture and the importance of

examiner training, and to offer practical practice tips.

Patent examiners operate within a curated USPTO cul-

ture that empowers decision-making. I recall early in my

patent examiner career preparing for my rst attorney inter-

view. I was nervous and uncertain of what to expect and

asked my supervising primary examiner (SPE) for guid-

ance. My SPE declared: “Remember that you are the

examiner. You decide. The application does not become

a patent without your approval. Your job is to raise issues

and rejections. You have done that. Now, it is their job to

convince you to change your position.” It was an “ah-ha”

moment for me as an examiner. In hindsight, it is a fair rep-

resentation of a key USPTO culture: Examiners know that

they decide who does and does not get a patent. And each

examiner wields his or her discretion and power differently.

Examiner discretion is at the core of the view that there are

as many patent ofces as there are patent examiners.1

Published in Landslide® magazine, Volume 10, Number 5 , a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2018 by the American Bar Association. Reproduced with permission. All rights reserved.

This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.

Jessica Harrison, a partner with Hubbs, Enatsky, & Auito in McLean, Virginia, advises in all aspects of intellectual property law. She also leads a

graduate-level online Patent Practice and Procedures course for the University of New Hampshire School of Law. Ms. Harrison has over 30 years

of IP and patent experience, with over 24 years as a patent examiner and manager at the USPTO. She may be reached at Jessica@hea-ip.com.

Patent examiner training is designed to facilitate better

decision-making skills and to continually promote high-

quality patent examination work product. Patent examiner

training also is designed to increase examination efciency

and promote consistent action-taking across hundreds of

thousands of actions drafted by thousands of patent examin-

ers, each with different educational backgrounds, skill levels,

and work ethics. Training begins on an examiner’s rst day

of employment when he or she begins the initial two-phased,

12-month, new examiner training curriculum, managed under

the Ofce of the Deputy Commissioner for Patent Qual-

ity (ODCPQ). Training continues annually for every patent

examiner through various forms of patent examination skills,

legal skills, and refresher training seminars. Training is the

workforce unier. Training is also the workforce controller.

Training is the USPTO culture’s keystone. As a supervi-

sor, I desired work product consistency across my art unit

and I utilized training to help ensure my examiners consis-

tently followed USPTO policy. I always answered examiner

questions with “What does the MPEP say?” because rst

impression examination questions are rare. The MPEP has

the answer. When case law alters USPTO policy, the MPEP

is changed and examiner retraining begins. However, it takes

time to shepherd work product change within the USPTO.

The administration and management aspects of leading

work product change in an 8,000+ union-represented exam-

iner workforce are daunting. Training must be developed

and delivered. Work product policing (i.e., work prod-

uct quality review,2 which exists on at least three levels for

examiner USPTO actions) begins by looking for examiner

incorporation of training principles into examiner work

product. Work product reviewers reect their ndings to man-

agement. Management, on at least an annual basis, reects

the review ndings to examiners through the examiner perfor-

mance appraisal plan (PAP). This process takes time. While

initial training compliance is often high, individual anomalies

and outliers always will exist because a primary examiner has

the discretion to not follow examination policy even though

the examiner is fully aware of performance rating risks.

All recent examiner training focuses on consistent examiner

action and creating a clear patent prosecution record. A few

surprises also are revealed. Review summaries are presented

in reverse chronological order for the previous three years.

All reviewed materials are publicly available on the USPTO’s

Examination Guidance and Training Materials web page.3

Responding to Legal Arguments Part I:

Understanding Case Law and the Federal Court

System (2017)

This short computer-based training (CBT) begins with a

broad explanation of the hierarchy of the U.S. federal court

system and notes that the Supreme Court and the Court of

Appeals for the Federal Circuit are the most important courts

for patent law. The high-level training outlines the follow-

ing legal fundamentals: the appeal and federal court review

of applications and patents; the hierarchy of controlling

legal authority; how to identify precedential decisions of the

Federal Circuit; deciphering legal citations; and what are

questions of law, questions of fact, and the different standards

of review. The training reminds examiners that fact-nding

Examiner discretion is at the core of

the view that there are as many patent

ofces as there are patent examiners.