USPTO Implements New Program to Teach Examiners How to Read and Understand Case Law

    By Donald Zuhn --

On Wednesday, the biotechnology, chemical, and pharmaceuticals (BCP) technology groups at the U.S. Patent and Trademark Office held their most recent quarterly customer partnership meeting.  During the last of six presentations, Associate Solicitor Janet Gongola outlined a new training module that the Office has begun using to instruct examining corps about case law.  Ms. Gongola noted that the new training module had been first used on November 18th, and that the examiners in Tech Center 1600 (biotechnology and organic chemistry) would receive their case law training sometime in December.

The new training module has been designed by the Office to provide examiners with a basic understanding of case law, including the components of an opinion, the meaning of precedent, and how to cite cases, so that examiners will be better able to respond to the use of case law by patent practitioners.  The case law training module being used by the Office consists of a pair of two-hour sessions, the first session constituting a lecture by an attorney from the Office of the Solicitor and the second session constituting a series of four laboratory exercises in which trainees split off into small groups to address hypothetical situations involving §§ 101, 102, 103, and 112 rejections.

Reviewing a number of slides from the first session of the training module, Ms. Gongola informed attendees that examiners are taught to always consult the MPEP first when attempting to ascertain the Office's policy regarding the meaning of a cited case.  In the event that the MPEP provides no information regarding the cited case, examiners are then taught to focus on the portion of the case that has been cited by the practitioner, and then, if necessary, to read other parts of the case that may be pertinent the issue.  The training module also helps examiners understand, identify, and distinguish holdings and dicta.  (Ms. Gongola noted, however, that examiners were being taught to avoid debates with practitioners over whether particular statements in a case constitute holdings or dicta.)  In addition, examiners are instructed on the difference between the headnotes/syllabus and the opinion itself and the difference between majority and plurality opinions, concurrences, and dissents.

During her presentation, Ms. Gongola recommended that when citing cases, practitioners should always cite to the U.S.P.Q. reporter, as it is the only reporter to which examiners have access.  In view of the limited amount of time that examiners are allowed to spend examining applications on their dockets, this recommendation appears to be a good one.

In an interesting aside, Ms. Gongola noted during her presentation that the Patent Office had hired 1192 new examiners in 2008, of which 32 had been assigned to TC 1600 and 207 had been assigned to TC 1700 (chemical and materials engineering).  The Associate Solicitor also noted that in 2007, 1196 new examiners had been hired, of which 62 had been assigned to TC 1600 and 154 had been assigned to TC 1700.  For the patent practitioners in the audience, who one might assume deal mostly with TC 1600 examiners, this does not come as particularly good news -- especially since the average total pendency in YC 1600 rose to 34.8 months in 2008 from 34.4 months in 2007 (see "USPTO Announces 'Highest Performance Levels in Agency’s History' in 2008").

A copy of Ms. Gongola's presentation can be obtained here.

Comments

[anonymousAgent]

What about a program to teach USPTO management to read case law?
Or the statute for that matter???

[EG]

Don,

I see there was a session on the new appeal rules. The one item that still puzzles me is what is now required by the appeal brief for the Statement of Facts section. The rules only give a very general description of what this section is about, but no examples of what should go in this section. (The response to the Comments in the the appeal rules notice are no more illuminating.) For example, now that the Summary of Claimed Subject Matter section has been dropped, is this where the discussion of the claimed subject matter goes? What are some other common items that should go in the Statement of Facts? Did the presenter ever elaborate on what should go into the Statement of Facts? Sorry for all these questions and sub-questions, but, at least in my opinion, this Statement of Facts requirement is very poorly explained by the new appeal rules.

[I Claim:]

How about a program to teach Examiners to read and understand patent applications?

[You Fail]

How about a program to teach Agents/Attorneys to write understandable patent applications and read prior art?

[Donald Zuhn]

EG:

Kevin will be doing a write-up on the appeals presentation that we should be posting early next week. I will forward your questions to him so that he can try to address them.

By the way, we will also be covering a number of the other BCP meeting presentations over the course of the next week.

Don

[EG]

Don,

Thanks much. Will look forward your posting next week on these BCP meeting presentations.

[JD]

I'm sure Ms. Gongola is well meaning, but the notion of limiting the training for examiners to respond to case law cites by practitioners is rather silly. What is needed is some training to prevent the citation of case law by examiners. Am I the only one tired of seeing the following: "The Smith reference doesn't show any of the features claimed, but Official Notice is taken that it's prima facie inherently obvious to optimize everything through routine experimentation. See In re Aller."?

The examiners need to be forbidden from citing case law unless the cite is reviewed by somebody who knows what they are doing. And I don't mean SPE's, QAS's, etc. I mean any, and all, case law cites in an Office Action should be reviewed by somebody with a law degree, or the Office Action doesn't get mailed out.

[Sean]

"...Ms. Gongola informed attendees that examiners are taught to always consult the MPEP first when attempting to ascertain the Office's policy regarding the meaning of a cited case."

Has any thought been given to revisiting the MPEP's "reading" of cases?

Whenever PTO cites caselaw along with the MPEP, I ALWAYS read the case, becasue more often than not the MPEP completely mis-construes the case. Good mileage can often be had by arguing back on the facts and application of the cited case.

PTO could make the examiner's job (and the practitioner's job) a little easier if they actually gave accurate descriptions of the cases cited.

[Nina]

I was an examiner (biotech art) and left the office about 15 years ago. I found that most practioners didn't cite case law correctly or misconstrued it. I really enjoyed looking up the cases and citing in context, pointing out dicta, etc. The practitioners were always surprised and never came back with a peep on the case law again. The prevailing attitude in the PTO at the time was that case law was only used when there was no factual basis to overcome a rejection. I don't know where they are on that now.
And you are correct - the MPEP was pretty worthless wrto case law.