Patent Law

Examiner Responsibility

By Gary Odom and Jordan Kuhn

USPTO examiners are the butt of many a joke on this blog, and often for good reason, receiving the respect they deserve. But, many examiners fulfill an essential need. They act as underappreciated civil servants that help promote the progress of this country, in a job that is tedious, monotonous, and often unfulfilling. Some even recognize the huge social responsibility that rests on their shoulders, and use this as the vehicle that propels them forward day in and day out. To those examiners - thank you.

When I first began working at the PTO, I had two realizations. First, I discovered exactly how much effort I would need to put in to get by - to get SPE approval of my office actions, and to make my production. Second, that putting in just this bare minimum effort was a disservice to applicants and an insult to an honorable profession.

It is easy to lose sight of the point of it all, intertwined in a web of poorly drafted specifications, overly broad claims, and egoistic prosecutors. Granted, prosecutors can be very frustrating. They over claim and have the tendency to nitpick at rejections and prior art; but, examiners must remember that many of these frustrations stem from randomly competent or at least overworked prosecutors and not from the intentions or desires of applicants themselves. Applicants must be given the benefit of the doubt, as innocent pawns in a corruptible game.

This is a call to all examiners, to accept the responsibility that has befallen you. Take the time to read applicant responses. Take the time to analyze a prior art reference in enough detail to know whether or not it actually teaches the claimed invention. Take the time to work with attorneys via interviews to arrive at a place of mutual benefit. Recognize the huge responsibility you have to help applicants protect their inventions, and the implications that this responsibility has on the future of our country. Looking for a feeling of fulfillment in a job that is often considered dull? Then step up and speak out.

When someone asks what you do for a living, tell them that you help protect the ideas of our citizens and fortify the development and progress of our nation.

Full post as published by The Patent Prospector on July 11, 2009 (boomark / email).