Message from the USPTO: It’s Patent Prosecution, not Persecution

The USPTO piloted the Stakeholder Training on Examination Practice and Procedure (STEPP) course from July 12-14 in Alexandria, Virginia.  The training was given as a major milestone of the Enhance Patent Quality Initiative, with heavy emphasis on the value of transparency.  Participants were selected among patent attorneys and practitioners, who became registered to practice with the USPTO after the America Invents Act was signed into law in 2011.

STEPP training was a 1:1 ratio of workshop patent examiner training and a dialogue between patent attorneys /agents and leaders at the USPTO.  The STEPP training course utilized the training material delivered to new patent examiners during a year-long 2-phase entry level program.  The range of topics covered during the course and the candor of the USPTO was impressive. Attendees began by examining the rubric and formula for the internal evaluation of entry-level patent examiners.

The attendees spent the next three days learning about patent searches and actually examining modified patent applications with the Supervisory Patent Examiners (SPEs).  The SPEs came from Tech Centers 3700 (mechanical engineering & medical devices), 2600 (communications, graphic processing, hardware, & memory), 2800 (semiconductors/memory, circuits/measuring & testing, optics/photocopying, printing /measuring & testing), and, at the request of the attendees, 2900 (designs).  Topics and exercises included patent searching, mapping art to claims, writing an office action and responding to an applicant, double patenting and restriction, Patent Trial and Appeals, and Central Reexam Unit practices and procedures.  The trainers gave not only the rubrics the examiners use for all these activities, but also the actual templates that examiners use when deconstructing an application.  Absolutely every question we, the 30+ attendees, came up with was answered.  (What a nightmare for any entity to open itself to three days of questioning from a room of attorneys.)  The USPTO proved to be dauntless and earnest.  The agency receives an A++ in my book for this measure towards transparency.

Ironically, it was after training was to officially end on Day Three that the lightning bolt of understanding and wisdom struck.  A panel of three brave SPEs sat before us and took each and every question we chucked at them.  The inevitable questions about Alice, Enfish, and Ariosa were asked.  The examiners responded with the publicly available and relevant USPTO guidelines.

The discussion was began to get cryptic; we were dancing around something pretty significant, but weren’t quite honing in on a critical matter.  I decided to ask the question that might be the dumbest one of the three-day session, but I didn’t want to walk away without missing the opportunity to dig deeper for clarity.  The dialogue that follows is undoubtedly paraphrased, and given in this form to convey the purpose and meaning of the exchange.

“So what if Case X clearly concludes with A, yet for some reason, the USPTO memo interprets Case X as having a completely opposite conclusion and instructs as such.  Who do you follow?”  I asked the panelists.

The panelists responded with something to the extent of, “You (attorney for inventors) often write a bunch of legalese and cases to us.  That means nothing to us.  Sometimes we feel you’re trying to intimidate us with all those legal arguments.”

We were still circling around a truth, but had not hit the target yet.  “So what you’re saying is, you have no onus to track case law.  What is binding in your universe is what the USPTO distills to you in its memos.  The memos are binding upon you.  Not judicial opinions, per se, but the memo.”

“Yes, exactly!” a panelist responded.

“Ok,” I ventured, “this is big, because I think people are under the impression that the USPTO memos are just guidelines to you; highly persuasive of course, but not binding.  And we [patent practitioners] become frustrated that we make dazzling legal arguments that fall on deaf ears.”

“Yes!” the panelists acknowledged.

“So, if I am to go back to my colleagues, what document can I show them that says USPTO guidelines are the beginning and end of your universe?”

The USPTO officials looked at each other and admitted that there was no document that said per se that the USPTO memo was binding.  One of the panelists chuckled, “Three words: Claim.  Your.  Invention.”

We already knew that examiners were not attorneys.  It was clear, however, that we patent practitioners needed to take that knowledge and let the significance of it emanate.  Not only are examiners not attorneys, but it is not part of their job to think like attorneys.  Even if they happen to have a J.D. or legal training, they are not to apply that sort of reasoning.  They are meant to be technical specialists, who carry out USPTO memos and holdings found in the MPEP.

Examiners are not supposed to think about the nebulous areas of 101, 102, or 103, nor are they to interpret case law from judicial opinions.  Instead, the USPTO has already determined how they intend to interpret these sources, and has distilled these decisions into memos for their examiners to follow.  To the examiners, an attorney putting forth arguments on such grounds is arguing issues that have already been settled.  There are appropriate periods in the pursuit of patent protect for attorneys to argue the grey areas of law, but the exchange with the examiner is not the time to do that advocacy to any great extent.  Arguing those grey areas in prosecution wastes clients’ resources and everyone’s time.

As a result of this dialogue, the SPEs and USPTO officials had other insights to share.  As frustrating as it is for us that patent examiners do not think like attorneys, it is just as frustrating for examiners that attorneys often are not technical specialists.  The panelists asked that attorneys involve, in interviews, the inventor, whom the examiners view as a likely compatible technical specialist.  The USPTO administration reminded us that if we have a good experience with the examiner, to communicate that in writing to the examiner.  That written feedback becomes part of the official record.  Chances are, over the course of your career, you’re going to get the same examiner more than once.  Invest in that relationship for your career and your client’s business success.