Saturday, May 12, 2007

Life as a patent examiner, using Rule 105?

IPBiz notes the following comment on just-n-examiner, which was written AFTER KSR v. Teleflex:

1) Avoid anybody at the PTO who tells you that your job is to "build a record." That's not your job. Issuing OA's with rejections that you know, your primary/SPE knows, and that I and my clients know, are bogus is not what applicants pay for. Applicants pay for an examination, not a "record." Make a mental note to yourself of everybody who tells you to "build a record." They are idiots. Stay away from them. 2) Understand that it's your job to judge the evidence and arguments submitted by applicants. It's not your job to robotically say "No" every time applicant says "Yes." Kind of goes back to that "building a record" thing. It's perfectly okay for you to agree with applicant's evidence and arguments when they are persuasive. 3) When the primary/SPE advises you, "Just tell them it's inherent/Take Official Notice that that's obvious/Cite In re Whomever," take the time to actually read the MPEP sections on those concepts, and maybe even read In re Whomever. It's a safe bet your primary/SPE never has. Maybe you can educate them. 4) Learn how to search. Actually read the definition of the class/subclass where the application you're examining is classified. Note the "Search also" and "See also" citations that go along with those definitions. Consult the primary in your art, and primaries outside your art. Note that you consulted the primary(ies) in your search notes. Even if the primary(ies) says there's no search. 5) Understand that you are not the moral arbiter of what is patentable and what is not. Regardless of your personal opinion of how incremental the advance, or how "silly" the invention is, those are not grounds for rejection. You are the arbiter of what is legally patentable. Please behave accordingly.

One notes elsewhere the discussion that KSR v. Teleflex rendered incremental advances obvious.

**Separately, this just-n-examiner thread discussed Rule 105: always wonder why examiners don’t issue information requests under 37 CFR 1.105. The information that can be requested is quite extensive and there isn’t much an applicant can do about it (take a look at MPEP 704.11).

**As a different observation, legal academics probably ought to read threads such as this one BEFORE writing articles such as "Ending Abuse of Patent Continuations..."


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