Prosecution Insights Gleaned from a Review of Recent Patent Examiner Training

Date01 May 2018
Author
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.

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