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.
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