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July 11, 2009

Examiner Responsibility

USPTO examiners are the butt of many a joke on this blog, and often for good reason, receiving the respect they deserve. But, many examiners fulfill an essential need. They act as underappreciated civil servants that help promote the progress of this country, in a job that is tedious, monotonous, and often unfulfilling. Some even recognize the huge social responsibility that rests on their shoulders, and use this as the vehicle that propels them forward day in and day out. To those examiners - thank you.

When I first began working at the PTO, I had two realizations. First, I discovered exactly how much effort I would need to put in to get by - to get SPE approval of my office actions, and to make my production. Second, that putting in just this bare minimum effort was a disservice to applicants and an insult to an honorable profession.

It is easy to lose sight of the point of it all, intertwined in a web of poorly drafted specifications, overly broad claims, and egoistic prosecutors. Granted, prosecutors can be very frustrating. They over claim and have the tendency to nitpick at rejections and prior art; but, examiners must remember that many of these frustrations stem from randomly competent or at least overworked prosecutors and not from the intentions or desires of applicants themselves. Applicants must be given the benefit of the doubt, as innocent pawns in a corruptible game.

This is a call to all examiners, to accept the responsibility that has befallen you. Take the time to read applicant responses. Take the time to analyze a prior art reference in enough detail to know whether or not it actually teaches the claimed invention. Take the time to work with attorneys via interviews to arrive at a place of mutual benefit. Recognize the huge responsibility you have to help applicants protect their inventions, and the implications that this responsibility has on the future of our country. Looking for a feeling of fulfillment in a job that is often considered dull? Then step up and speak out.

When someone asks what you do for a living, tell them that you help protect the ideas of our citizens and fortify the development and progress of our nation.

Posted by Mr. Platinum at July 11, 2009 9:14 AM | The Patent Office

Comments

Examiners have a challenging and sometimes tedious job. The vast majority of them do a very good job. Thank you.

Posted by: John Prosecutor at July 11, 2009 12:50 PM

"This is a call to all examiners, to accept the responsibility that has befallen you. Take the time to read applicant responses. Take the time to analyze a prior art reference in enough detail to know whether or not it actually teaches the claimed invention. Take the time to work with attorneys via interviews to arrive at a place of mutual benefit. Recognize the huge responsibility you have to help applicants protect their inventions, and the implications that this responsibility has on the future of our country. Looking for a feeling of fulfillment in a job that is often considered dull? Then step up and speak out."

Or you can take it from me. If you do as Mr. Platinum encourages it will get you three things. One, being the butt of jokes here, two, lower production than you could have, and three, longer hours than you need to put in.

If you do the exact opposite of what Mr. Platinum encourages, you'll get three things. One, recognition as an underappreciated civil servant, two, higher production (and more money when OT is available), and three, shorter hours than you would otherwise put in.

The choice is yours!

Posted by: 6 at July 11, 2009 7:21 PM

I also congratulate the many examiners that do a good job in their work. Unfortunately, as practitioners, we tend to remember and comment on the other ones far too often. So, here's to the hardworking examiners who are too often underappreciated.

Posted by: Hal at July 12, 2009 3:26 PM

Thanks for this. Especially since seeing some really bad Office Actions post-KSR, I realize that the good Examiners don't have to do good job. They too could find similar sounding elements in various references and call the combination obvious because, that's why. The ones who do a real examination and try to cite relevant art and pay attention when I point out the differences are treasures.

Posted by: tazistan jen at July 13, 2009 10:41 AM

US examiners have the difficulty that they operate in a climate of legal uncertainty. What is inventive step post KSR? If you read the KSR and Graham decisions carefully, you find that every case has to be decided according to the evidence and that although some preliminary steps are prescribed, on their completion the well-known scales of justice have to be got out and put into use. As regards standards, the only rule is that there are no rules and under Graham cannot be any rules otherwise the application is not being evaluated according to the evidence and the applicant is not receiving due process. Not so different from their colleagues in the UK, although colleagues in the EPO are (slightly) better off with the concept of technical problem.

It is troubling, though, when a recommendation from the Supreme Court in the (if you read it carefully) very conservative KSR decision that common sense forms part of the decision-making process leads to wholesale and emergency re-writing of the rule book. Hopefully things will settle down soon.

Posted by: Paul Cole at July 15, 2009 4:07 AM

Paul Cole writes: "the only rule is that there are no rules".

Maybe that means that the rigid Bilski test/rule will be shot down too?

Posted by: John Prosecutor at July 15, 2009 1:12 PM

Paul, I would say that those petitioning the EPO are loads better off (I would, wouldn't I?). But it's not so much because of "the concept of technical problem" but, rather, the concept of the OBJECTIVE technical problem. An EPO Examiner who resorts to subjectivity is simply not following PSA (the EPO's special "Problem and Solution Approach") and is soon identified as incompetent. In reality, no EPO Examiner has any option other than to argue obviousness objectively, right from the first para in the FAOM. Young Examiners are intelligent, and soon learn to do PSA right. Objectivity thus soon gets ingrained, right across the EPO (unlike in other Patent Offices).

OK, we eventually get objective in the English courts, but that's not much help to an impecunious Applicant who just needs a speedy B publication for her non-obvious contribution to the art.

Posted by: MaxDrei at July 15, 2009 10:22 PM