Friday, February 17, 2006

WHAT TYPE OF EXAMINER DID YOU GET? First office actions are important because they provide an initial indication of the strength of the claims in relation to the prior art, and also because the office action provides clues as to what type of prosecution experience you will likely have going forward.

While the overwhelming majority of office actions are straightforward, there are inevitably the quirky ones that leave clients and attorneys scratching their heads, wondering what exactly took place. Substantive issues aside, the type of examiner reviewing your application can often help you understand the motivations behind some of the actions. Just like litigants that size-up judges during litigation, patent practitioners should be aware of the personalities involved in the USPTO examining corps. This is especially true for foreign applicants that may view the US patent process as some weird, ritualistic exercise.

With this being Friday and all, I decided to post today on the 4 idiosyncratic examiner types that most practitioners will encounter when prosecuting applications. There are some sub-categories under each type, but the list should give you a general idea:

The "Eager Beaver" - When new examiners join the corps, they are given a trial period where they can write office actions without being on the count system. In theory, this means that they can spend as much time as they want reviewing an application and applying every section of the MPEP to the application. The Eager Beaver makes this theory reality: in cases of foreign-filed applications, office actions can be in excess of twenty pages, and are often accompanied by fastidious objections to application formalities, no matter how slight. In the overwhelming majority of cases, all of the claims will be rejected, and the Eager Beaver has no problems stringing 4-5 references together to form obviousness rejections ("when in doubt, reject using obviousness"). In essence, the examiner is being overly-cautious by making sure every perceived issue is covered in the office action. This practice usually begins to disappear after the first year of being an examiner.

Incidentally, if you want to know if you're dealing with a junior examiner, look for "the stamp." At the end of each office action, there's a signature page. If another person's name is signed alongside the examiner's signature, and has a stamp indicating "primary examiner" or "supervisory patent examiner," then you know the examiner doesn't have signatory authority (i.e., is a junior examiner).

The "Easter Egg Hunt" Examiner - After being the the examining corps for a year or so, examiners typically start to look for ways to cut corners to minimize the time they have to spend preparing office actions. After reaching a certain point however, the "minimal effort for maximum return" approach goes too far, and rejections turn into an Easter Egg hunt for the attorney trying to find the salient teaching in a broadly-cited reference. Rejections from these types of examiners will presume that applicants, being "skilled in the relevant art", will know everything that the examiner is assuming is contained in the reference, thus obviating the need to make specific references. Accordingly, the rejection will cut-and-paste the claim into the rejection and cite ridiculously broad sections of a document to support the rejection (e.g., "reference X teaches all the limitations of claim 1, as disclosed in col. 3, line 12 - col. 10, line 67; see also FIGs. 2-8"). In most cases, the rejection is simply wrong. And if that's the case, a good way to deal with this type of rejection is to set up an examiner interview, and start by requesting that he/she shows exactly where these teachings are contained in the cited passages. Chances are, the rejection will simply go away without having to formally respond on paper.

The "Francis Sawyer" - named after the character in Stripes ("the name's Francis Sawyer, but everybody calls me Psycho. Any of you guys call me Francis, and I'll kill you") this type tends to populate the more senior examiner ranks in the USPTO. After spending five or more years dealing with opportunistic attorneys, they have stopped disguising their contempt and do whatever it takes to show who's the boss during the examination process. Surly and vindictive, the Francis Sawyer will rarely pass a chance to "stick it" to an attorney, and often views the examination process as an adversarial struggle. Smart enough to be dangerous, this type will loosely follow USPTO and Federal Circuit developments and experiment his/her theories in office actions (anyone experiencing a Rule 105 "Requirements for Information" request may know what I'm talking about). Any tactics deemed successful are then disseminated to other examiners. I continue to maintain the belief that the "technical arts" test that led to the USPTO's Ex Parte Lundgren decision was started by a Francis Sawyer-type that gave this theory a run for its money.

The "Moonbeam" - saving the worst for last, this type of examiner is one that doesn't get it, and possibly never will. Deficient in technical and legal comprehension, the Moonbeam will often have you wondering what application the examiner was looking at when writing the office action. Worse yet, they have no problems dropping one line of rejections in favor of another unrelated line of rejections, regardless of their merit. In one application, I remember having eight different lines of prior art being sequentially applied to the claims during the examination process before the application was finally allowed. Only minor amendments were made to the claims after the first, and only, RCE was filed (the application was appealed once, and three separate interviews were conducted). We even tried pulling the case from the examiner, but were unsuccessful (this is a pretty difficult thing to do). It's pretty rare when you come across a Moonbeam, but when it happens, you don't soon forget it. Fortunately, these types don't last very long at the USPTO, and are pushed out pretty quickly. But in the meantime, they manage to make life a living hell for you and your client.

9 Comentários:

Daniel said...

I found this highly entertaining. :-)

Anonymous said...

We had an examiner that we went 4 rounds with. On the 4th round he had sent back prior art as part of the rejection that he had sent over on the 1st round.. (and we explained in detail why it was different).

Then the guy agreed to allow the patent if we changed a little bit of the description. He used this to do new searches with! 4 years later the patent was issued. Never mind the legal bills.

I classify him as the "jackass"

Anonymous said...

I wonder whether such a "classification" of examiner types does exist also for the European Patent Office that is known to examine much more thoroughly than the USPTO. Here in Europe the common prejudice is: In US you can get almost everythig granted as filed ...

Anonymous said...

Anonymous above is clearly an examiner at the EPO. He's absolutely right nonetheless.

Anonymous said...

Has anyone yet assigned a name to agents who simply miss whole passages of text out from between the bridge of the bottom of one page and the top of the next during amendment stage ? Whilst recieving not insubstantial renumeration for such a display of legal "expertise" ?

They are a well represented enough group to attract their own name in my opinion.

At least a couple of such cases a month at cross my desk.

Not that I would categorise myself under any of the names suggested in this blog, but stones and glasshouses etc... !

Anonymous said...

...and Anonymous of 8:51 is probably an EPO examiner too. He's absolutely right nonetheless.

Anonymous said...

hello from your friends up north.

Anonymous said...

Why can't most of the applicants' representatives properly set their applications ? Most of them are clever people who passed hard exams to become patent attorneys: i.e. they know exactly what should be done... and they don't do it. After that, the blame is on the patent examiners, of course. Weird, isn't it ?
Signed: a patent examiner, you bet ?

asssssssssss said...

Examiners think god licks their assholes. They are evil people just like george bush himself, stupid and make the obvious seem microscopic. fuck u all examassers. They could relate prior art to anything if they want. example, object 4 said is to that of object 3 said to be or is to of the same of 3. they could say the number 3 is just like the number 4 if they wanted. Try telling a math teacher that 3 and 4 have prior art together

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