©2018. Published in Landslide, Vol. 10, No. 5, May/June 2018, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.
In my 24 years of experience inside the U.S. Patent and Trademark Office (USPTO) and several years practicing as an outside patent attorney, it is apparent to me that practitioners can benefit from a better understanding of patent examiner culture and training, and its influence on prosecution. In my current practice, practitioners frequently ask me to explain an action anomaly or the secret to compelling an examiner’s action or inaction. My responses frequently point to examiner culture and training. This article seeks to increase practitioner understanding of examiner culture and the importance of examiner training, and to offer practical practice tips.
Patent examiners operate within a curated USPTO culture that empowers decision-making. I recall early in my patent examiner career preparing for my first attorney interview. I was nervous and uncertain of what to expect and asked my supervising primary examiner (SPE) for guidance. My SPE declared: “Remember that you are the examiner. You decide. The application does not become a patent without your approval. Your job is to raise issues and rejections. You have done that. Now, it is their job to convince you to change your position.” It was an “ah-ha” moment for me as an examiner. In hindsight, it is a fair representation of a key USPTO culture: Examiners know that they decide who does and does not get a patent. And each examiner wields his or her discretion and power differently. Examiner discretion is at the core of the view that there are as many patent offices as there are patent examiners.1
Patent examiner training is designed to facilitate better decision-making skills and to continually promote high-quality patent examination work product. Patent examiner training also is designed to increase examination efficiency and promote consistent action-taking across hundreds of thousands of actions drafted by thousands of patent examiners, each with different educational backgrounds, skill levels, and work ethics. Training begins on an examiner’s first day of employment when he or she begins the initial two-phased, 12-month, new examiner training curriculum, managed under the Office of the Deputy Commissioner for Patent Quality (ODCPQ). Training continues annually for every patent examiner through various forms of patent examination skills, legal skills, and refresher training seminars. Training is the workforce unifier. Training is also the workforce controller.
Training is the USPTO culture’s keystone. As a supervisor, I desired work product consistency across my art unit and I utilized training to help ensure my examiners consistently followed USPTO policy. I always answered examiner questions with “What does the MPEP say?” because first impression examination questions are rare. The MPEP has the answer. When case law alters USPTO policy, the MPEP is changed and examiner retraining begins. However, it takes time to shepherd work product change within the USPTO. The administration and management aspects of leading work product change in an 8,000+ union-represented examiner workforce are daunting. Training must be developed and delivered. Work product policing (i.e., work product quality review,2 which exists on at least three levels for examiner USPTO actions) begins by looking for examiner incorporation of training principles into examiner work product. Work product reviewers reflect their findings to management. Management, on at least an annual basis, reflects the review findings to examiners through the examiner performance appraisal plan (PAP). This process takes time. While initial training compliance is often high, individual anomalies and outliers always will exist because a primary examiner has the discretion to not follow examination policy even though the examiner is fully aware of performance rating risks.
All recent examiner training focuses on consistent examiner action and creating a clear patent prosecution record. A few surprises also are revealed. Review summaries are presented in reverse chronological order for the previous three years. All reviewed materials are publicly available on the USPTO’s Examination Guidance and Training Materials web page.3
Responding to Legal Arguments Part I: Understanding Case Law and the Federal Court System (2017)
This short computer-based training (CBT) begins with a broad explanation of the hierarchy of the U.S. federal court system and notes that the Supreme Court and the Court of Appeals for the Federal Circuit are the most important courts for patent law. The high-level training outlines the following legal fundamentals: the appeal and federal court review of applications and patents; the hierarchy of controlling legal authority; how to identify precedential decisions of the Federal Circuit; deciphering legal citations; and what are questions of law, questions of fact, and the different standards of review. The training reminds examiners that fact-finding is an essential part of their job and that the Patent Trial and Appeal Board (PTAB) is more likely to affirm examiners who clearly explain what the prior art teaches because the PTAB judges are mindful of the Federal Circuit’s deference under the substantial evidence standard.4
Importantly, this training stresses that the MPEP is updated regularly and is designed to be consistent with the applicable laws, regulations, and judicial decisions, and that additional examiner guidance documents are issued as needed to supplement the MPEP. The training concludes by stating: “Examiners should apply case law as explained in the MPEP and other USPTO guidance documents. Examiners are not expected to do additional legal research beyond the MPEP and other USPTO guidance documents.”5
This training should be entitled “30-Minute Law School for Patent Examiners” as it reflects the extent of legal training provided to patent examiners. A surprising revelation for practitioners is that although practitioners may not view the MPEP as having the full force and effect of law, for patent examiners, the MPEP and USPTO training are the only sources of legal guidance and law. Thus, arguing recent precedential case law (too soon to be incorporated into guidance documents) or other nonprecedential court decisions before examiners rarely moves their positions. However, practitioners who alternatively or additionally frame legal arguments through the law that is found in the MPEP or other USPTO guidance documents may find more success.
Responding to Legal Arguments Part II: How to Evaluate and Analyze Legal Arguments Based on Case Law (2017)
This training workshop compliments Part I and focuses on evaluating and applying case law as necessary. The training has the stated goal of helping examiners “[u]nderstand how to read and evaluate Applicant’s arguments based on case law citations” and “[b]ring consistency to responding to Applicant’s arguments based on case law.”6 The training includes two practice analysis hypotheticals for each of the chemical, electrical, and mechanical technologies and the workshop answer key.
The training hypotheticals and answer key provide deep insight into several important practitioner takeaways. The first takeaway is that examiners are trained to specifically look for a response argument’s deficiency that relieves the examiner’s duty to consider and respond to the argument. In each of the hypothetical examples provided, examiners are directed to determine what arguments the applicant makes in response to a rejection, determine if the argument includes case law that is binding on the examiner, and determine whether it is necessary to review any of the cited cases. For example, examiners are reminded that arguments not specifically applied to the facts of the case being examined are not proper arguments. All six hypotheticals conclude that the examiner does not have to read or consider any of the cited cases. Strikingly, three of the hypotheticals conclude that no proper argument has been advanced by the applicant and the analysis quickly ends. Further, two of the hypotheticals show that when the cited cases are discussed in the MPEP for the applicant’s proffered position, the examiner need only consider the MPEP’s guidance when responding to the applicant’s argument. The training reinforces the USPTO position from Part I: that examiners should apply case law only as explained in the MPEP and other USPTO guidance documents.
Further, all hypothetical examples point out that it is incumbent upon the applicant to present “a writing which distinctly and specifically points out the supposed errors in the examiner’s action” to comply with 37 C.F.R. § 1.111(b). The training reminds examiners that, under MPEP section 710.01, they may accept a noncompliant response under 37 C.F.R. § 1.111(b) and should preferably, in accordance with the tenets of the USPTO’s “compact prosecution” policy, move forward by accepting a bona fide but noncompliant amendment. In that situation, it is permissible to make the next office action final.7 Thus, a clear practitioner takeaway should be to review these training hypotheticals to understand what examiners are looking for and to adjust responses accordingly, or else the practitioner may face a final rejection with little or no apparent consideration of arguments on the record.
Another important practitioner takeaway from this training is that for any determination that an argument including case citation has been properly advanced by an applicant, and to the extent the case cited is precedential and therefore binding on the examiner, the examiners have been directed to only follow the guidance provided by the MPEP. Thus, when constructing arguments, reviewing the MPEP and framing response arguments around the case law cited therein are critical to successfully persuading examiners. Examiners will likely automatically disregard any arguments and case law presented that is outside of the MPEP because training tells them that is work they do not have to perform.
However, practitioners must remain mindful of presenting all arguments and case law not contained in the MPEP but important in preserving rights during any potential appeal. For example, the training makes clear that examiners are not bound by any PTAB decision, including a precedential decision, unless the decision is specifically discussed in the MPEP. When specifically discussed in the MPEP, the training explains, PTAB decisions are considered binding because they have been adopted as USPTO policy and not because PTAB decisions are binding on the examiner. Practitioners must be mindful that upon any appeal to the PTAB, the PTAB is bound by PTAB precedential decisions regardless of their USPTO policy adoption.8 Thus, practitioners must present and argue any decisions binding on the PTAB either during prosecution or with the filing of an appeal brief, even though the examiner will only consider the cited decision to the extent the decision has been adopted as USPTO policy and appears in the MPEP.
Enhancing Clarity by Ensuring That Claims Are Definite under 35 U.S.C. 112(b) (2016)
This training presentation reminds examiners that 35 U.S.C. § 112(b) is a powerful tool for clarifying the boundaries of claims and that appropriate 35 U.S.C. § 112(b) rejections can be leveraged for enhancing the prosecution record because clarifying the record establishes a foundation for future claim interpretation, which benefits the applicant and the public. In other words, raising appropriate 35 U.S.C. § 112(b) rejections enhances patent examination quality. By raising claim clarity issues, examiners “shift the burden of clarifying the boundaries of claimed protection to the applicant, who is best suited to explain what he has invented.” Examiners must identify the specific indefinite claim language and explain why that language renders the claim boundaries unclear.
This training could reasonably be summarized as: Clear and definite boundaries benefit the patentee and the public, so go forth, examiners, and leverage this tool to enhance patent quality because enhancing the quality of patents “fosters innovation and competitiveness” and “raises confidence in the patent process.”9 Examiners are told that applicants may respond to indefiniteness rejections by explaining why the language is definite and/or amending the claim to resolve the indefiniteness. When an applicant’s reply resolves the issue, it is a “best practice” to indicate on the record how the issue was resolved if the record is not clear. Unclear records result when, for example, an applicant argues that a claim term is definite and amends the claim. Practitioners therefore should either argue definiteness or amend the claims and argue that the amendment resolves any indefiniteness issue.
This training is tantamount to the same practical interview advice my SPE gave me many years ago: The examiner’s job is to raise issues and rejections and shift the burden out to the applicant to convince the examiner of errors in action taking. The practical effect of this training is that practitioners will face more 35 U.S.C. § 112(b) rejections and be challenged with managing the resultant file wrapper estoppel created by any response path if they do not repair claim sets with close attention to details and clarity.
Functional Language Workshop: Claim Interpretation and Definiteness under 35 U.S.C. 112(b) (2016)
This training and claim analysis workshop is worthy of review by anyone who prosecutes claims utilizing functional language. Evident throughout the training slides and hypothetical examples is a reiteration of the USPTO position that 35 U.S.C. § 112(b) is to be used by examiners to thoroughly probe the boundaries of functional language and recitations under 35 U.S.C. § 112(f) and is to be used as a tool to burden shift clarity issues back to the applicant. The slide set presents the case of Clare v. Chrysler Group LLC10 as an example of good examination practice because the examiner raised 35 U.S.C. § 112(b) rejections against Clare’s functional claim language during prosecution. In response, Clare argued that an ordinary interpretation of the functional language would suffice, and a patent was issued. Clare later asserted the patent in a claim for infringement, and the court held that the record was clear as to what was meant by the functional language. The Clare claim was not indefinite, but the accused infringer did not infringe the Clare claim. In the training’s viewpoint, the public benefit of a clear record outweighs the potential effects of unclear claim boundaries.
From a patent prosecution practitioner’s viewpoint, however, the Clare takeaway is cautionary in that the claims ultimately failed at providing sufficient protection for the patentee. This example highlights the divided perspective between what the USPTO views as a high-quality examination and what a patentee or the public may view as a low-quality patent. As a result, it is important that practitioners utilizing functional claim language have a thorough understanding of the examiner’s functional language training to avoid rejections of functional language as lacking clarity under 35 U.S.C. § 112(b). The training workshop resources include functional language worksheets that direct a six-step functional language analysis and answer keys that step through the analysis. Practitioners can use these worksheets to ensure a drafted specification supports functional claim language.
Reasons for Allowance Training (2016)
This training reminds examiners that 37 C.F.R. § 1.104(e) permits reasons for allowance when, in the examiner’s discretion, “the examiner believes that the record of the prosecution as a whole does not make clear his or her reasons for allowing a claim or claims.” The permissive nature of 37 C.F.R. § 1.104(e) is stressed: “It should be noted that the setting forth of reasons for allowance is not mandatory.” The training notes that stock form paragraphs that merely restate the claim language should not be used. The training concludes by reminding examiners that they must make a judgment based on the merits of the case to determine whether any reasons for allowance should be set out in that particular case, and to understand and appreciate how a statement of reasons for allowance impacts the record of a patent.
Examining Claims for Compliance with 35 U.S.C. 112(a) (2015)
Part I of this two-part training provides an overview of the written description requirement of 35 U.S.C. § 112(a) and focuses on examination of claims including functional language for compliance with the statute’s written description requirement. Of interest to practitioners of the computer and software arts is the stated policy concern that “[c]ompliance with § 112(a) for these types of claims [recited programming functions] is critical to ensure that inventors do not ‘attempt to preempt the future before it has arrived’ by claiming pure functions without limits as to how they are accomplished.”11 Thus, there is an articulated USPTO policy concern regarding preemption and overbroad claiming.
Because there is a presumption that a specification is filed with an adequate written description under 35 U.S.C. § 112(a), the examiner bears the burden of presenting a prima facie case of a lack of written description. Examiners are told that by entering a prima facie rejection under 35 U.S.C. § 112(a), the burden shifts to the applicant to amend the claim language or to demonstrate specification support for enablement or possession of the invention. When considering a proffered argument in response, the training reminds examiners that “[i]t is not sufficient to respond to a rejection based on lack of written description with an argument that one of ordinary skill in the art could devise a way to perform a function because the written description requirement requires the inventor to disclose the details of how the invention operates or the function is performed.” Thus, practitioners are well served to frame 35 U.S.C. § 112(a) response arguments in terms of evidence that demonstrates actual invention possession and not rely on ordinary skill or common knowledge.
Part II of the training covers examining claims with functional language for compliance with the enablement requirement of 35 U.S.C. § 112(a) with a focus on computer- and software-related claims. The training reminds the examiner to consider enablement, without undue experimentation, of the invention to the extent of the full scope of the claims. The training notes that in computer-related applications, enablement issues typically arise when the scope of the claim is not commensurate with the disclosure, such that the claim would cover all devices for or ways of performing a claimed function. The training reinforces the USPTO’s policy concern regarding preemption and overbroad claiming.
The training notes that in addition to amendment or argument, an applicant may submit an affidavit presenting expert testimony that includes factual evidence that the disclosure is adequate to support the full scope of the claims. Examiners have been directed to look for evidence that speaks to the level of skill in the art, facts directed to the amount of time and effort and level of knowledge required for the practice of the invention, and the commercial availability of components that show that a person of ordinary skill in the art would know which or what parts of components could be used to make and/or use the invention. Further, examiners are cautioned to not accept argument that one of ordinary skill in the art could devise a way to perform a function or to allow new matter to be added to the specification after filing to resolve a lack of disclosure. Practitioners should note providing expert evidence meeting the directed criteria may be an option for overcoming enablement rejections.
Examining Functional Claim Limitations: Focus on Computer/Software-Related Claims (2015)
This training also articulates the USPTO’s focus on the public notice function of patent claims and stresses the importance of claim clarity. Examiners are cautioned to recognize and to refuse to accord patentable weight to “intended result” functional language and/or to consider rejecting the language as indefinite. However, examiners are to give patentable weight to positively recited software in claims. For programmed devices, examiners are to interpret a claim reciting a computer programmed to perform a function as requiring prior art disclosing a computer performing the same function. In contrast, examiners are told that a claim reciting a programmable device could be met by a device capable of being programmed to perform the function. Practitioners in the software-related arts should exercise drafting care to avoid intended result language and to positively recite software functions in combination with a computer programmed (or configured) to perform the functions. Because examiners may struggle with claim forms outside of the trained claim norms, presentation of at least one claim set in the form examiners have seen in their training is recommended.
Broadest Reasonable Interpretation (BRI) and the Plain Meaning of Claim Terms (2015) and Other 35 U.S.C. § 112(f) Means-Plus-Function Training
These training modules cover identifying and distinguishing claim limitations that invoke 35 U.S.C. § 112(f) means-plus-function language from claim limitations that do not invoke 35 U.S.C. § 112(f), BRI, and definiteness, and making the prosecution record clear. The training covers the three-prong analysis described in MPEP section 2181 and is a solid refresher of well-developed claim interpretation law pre-Williamson v. Citrix Online.12 It appears the USPTO recognizes no major change to the three-prong analysis post-Williamson even though Williamson has been incorporated into MPEP section 2181.
Interview Practice Training (2015)
Interview practice training13 focuses on technical aspects of initiating and conducting video face-to-face interviews and policy reminders regarding interview authorization, interview preparation, and interview summary content. Of note in this training are the statements that “[a]ll requests for face-to-face interviews [in person or via video conferencing] by the Applicant should normally be granted” and “Applicants or Examiners may request a SPE to participate in an interview in order to facilitate discussion as needed. A request for SPE participation will normally be granted.” Awareness of and quotation of these statements may prove beneficial to applicants facing an examiner refusing interview requests or requests for supervisor participation.
Practitioners who have completed a post-interview survey may be interested in the interview data and survey feedback presentation found on slides 4–8. Notably, slide 8 shows stakeholder responses compared to examiner responses for the same interview survey questions. While the responses are generally in alignment, the question about whether agreement was reached drew the most perceptual disagreement. Examiners found interviews resulted in agreement or advanced prosecution substantially more often than stakeholders, indicating examiners find interviews beneficial. Practitioners may be well served to talk with examiners.
Several themes emerge as constants across all recent examiner training. Examiners depend on training and MPEP guidance virtually exclusively. Practitioners will benefit by framing legal arguments via the MPEP’s language of the law. Examiners seek efficiency and are trained to raise issues, burden shift, and be persuaded to allowance without regard for file wrapper estoppel. Practitioners will benefit by understanding trained expectations and carefully drafting claims to be clear and definite. Examiners want to be comfortable allowing claims. Clear claim boundaries increase examiner comfort. Practitioners will benefit by communicating with examiners and asking what can be done to increase claim allowance comfort.
1. Ian M. Cockburn et al., Are All Patent Examiners Equal? Examiners, Patent Characteristics, and Litigation Outcomes, in Patents in the Knowledge-Based Economy 19 (Wesley M. Cohen & Stephen A. Merrill eds., 2003).
2. See U.S. Patent & Trademark Office, Master Review Form, https://www.uspto.gov/sites/default/files/documents/MRF.pdf (last visited Apr. 2, 2018).
3. Examination Guidance and Training Materials, U.S. Patent & Trademark Office, https://www.uspto.gov/patent/laws-and-regulations/examination-policy/examination-guidance-and-training-materials (last modified Mar. 27, 2018).
4. In re Gartside, 203 F.3d 1305, 1316 (Fed. Cir. 2000).
5. U.S. Patent & Trademark Office, Responding to Legal Arguments Part I: Understanding Case Law and the Federal Court System 40 (2017), https://www.uspto.gov/video/cbt/rspnd-lglargmnts/index.htm (emphasis added).
6. U.S. Patent & Trademark Office, Responding to Legal Arguments Part II: How to Evaluate and Analyze Legal Arguments Based on Case Law 3 (2017), https://www.uspto.gov/sites/default/files/documents/partii_legalworkshop_slides01.pdf.
7. Id. at 74–76.
8. Patent Trial & Appeal Bd., Standard Operating Procedure 2 (Revision 9) § III.E. (2014), https://www.uspto.gov/sites/default/files/documents/sop2-revision-9-dated-9-22-2014.pdf.
9. U.S. Patent & Trademark Office, Enhancing Clarity by Ensuring That Claims Are Definite under 35 U.S.C. 112(b), at 6 (2016), https://www.uspto.gov/patent/laws-and-regulations/examination-policy/examination-guidance-and-training-materials.
10. 819 F.3d 1323 (Fed. Cir. 2016); U.S. Patent No. 6,499,795.
11. U.S. Patent & Trademark Office, Examining Claims for Compliance with 35 U.S.C. 112(a): Overview & Part I—Written Description 9 (2015), https://www.uspto.gov/video/cbt/examiningclaimsforcompliancefinal-part%201/.
12. 792 F.3d 1339 (Fed. Cir. 2015).
13. U.S. Patent & Trademark Office, Interview Practice Training 7–9 (2015), https://www.uspto.gov/sites/default/files/documents/FY15%20Interview%20Training%20-%206-26-2015.pdf.