The quarterly customer partnership meeting of the biotechnology, chemical, and pharmaceutical (BCP) technology groups at the U.S. Patent and Trademark Office, provided an update on the training and development of Examiners.  Janet Gongola, Associate Solicitor for the Office of the Solicitor, presented a new training module for teaching patent examining corps about case law.

According to the presentation:

Q:  Why is the structure of a decision relevant to examiners?
A:  Helps examiners navigate a decision to more quickly and easily identify examination tips

The new training module is supposed to enable examiners to better understand what case law is, how to find it, and how to respond to it in Office Actions when raised by Applicants.  According to the presentation, the examiners are to compare or contrast facts in case law with those in an application and then apply the reasoning from the case law to application under examination.  But, is it realistic to ask examiners to act as lawyers after a few hours of training?

The presentation is supposed to provide examiners with a basic understanding of case law, 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.

The examiners are supposed to consult the MPEP first when attempting to ascertain the Office’s policy regarding the meaning of a cited case and then, if necessary, look to case law in BNA’s USPQ database.  According to the USPTO’s “dirty little secret”, examiners don’t have to read the whole case but instead can just read the portion(s) of the case that has been cited by the practitioner, and then, if it seems relevant, read other parts of the case.  The training module also is to help examiners understand holdings v. dicta, the difference between the headnotes and the opinion and the difference between majority opinions, plurality opinions, concurrences, and dissents.

Under justifications for the program, Ms. Gongola presented recent USPTO statistics:

  • 448,003 applications examined
  • 332,617 new utility application filed
  • 25.6 months average first action pendency
  • 32.2 months average total pendency
  • 1,765 new applications for Accelerate Examination (186 days to final action or allowance)

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.

What’s your take?  Will this help avoid examination mistakes or will it give practitioners more headaches with applications under the old adage that a little knowledge can be dangerous?

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