V.  IMPROVING QUALITY

Introduction

Hybrid Examiner Trainer

Training

Procedural
Workgroup 2760 Training Manual
Search Strategy Training
Commercial Database Searching
March 2000 Initiatives on Searching
 -  Class 705 Core Databases
Technical
Field Trips, Conferences and Seminars
March 2000 Initiatives on Training

March 2000 Initiative for Additional Review

Measures of Quality Efforts

In-process Review

A. INTRODUCTION

It is universally agreed that high quality examination by USPTO Patent Examiners must be ensured. Quality initiatives are continuously updated. The detailed discussion below highlights initiatives in place prior to March 2000, as well as, quality initiatives announced in March by Q. Todd Dickinson, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office. Each new quality initiative follows the pre-March 2000 initiative discussion it relates to most closely.

The mission of the USPTO is to help our customers get patents. However, not all applications are patentable. The patent examiner is tasked with helping the inventor including pointing out patentable inventions disclosed but not claimed in the originally presented claims. The examiner is also tasked with analyzing the scope of the claims and determining if sufficient evidence exists to meet the burden of proof to deny the granting of a patent on some or all of the presented claims. The patent statute is quite specific: "A person shall be entitled to a patent unless" this burden of proof is met. In Class 705, the examiners are able to grant patents on presented claim(s) about 57% of the time.

B. HYBRID EXAMINER-TRAINER

To assist first-line supervisors with training and review of work, Workgroup 2760 is using Examiner-Trainers in the Class 705 arts to promote consistent examination. An Examiner-Trainer is a Primary Examiner that spends 50% of the time examining patent applications, and 50% of the time training others in legal, procedural, and technological aspects of patent examining. On each application they examine, the new examiners work extremely closely with the Examiner-Trainers learning patent examining practice and procedure. In this way, the workgroup was able to properly train and integrate all their new hires in Fiscal Years 1999 and 2000.

C. TRAINING

1. Procedural

All examiners receive training in legal, procedural and technical training throughout their career at the USPTO.

When first hired, patent examiners undergo two weeks of intensive training in patent examining procedure. Here, the new employees learn the various statutes (35 USC) and rules (37 CFR) that govern the patent system. Using generic examples and lectures, they also learn how to properly examine an application and provide feedback (in the form of an Action) to the applicant. Upon successful completion of this course, the new examiners are released to the art units/workgroups for further training.

Upon their arrival in Workgroup 2760, the new Class 705 examiners learn of the policies and procedures of Workgroup 2760 and Technology Center 2700. Their orientation covers the workgroup training manual (to be discussed later in this paper), administrative procedures of the workgroup and of the technology center, and a discussion of training opportunities available.

Within the first month, new examiners are also trained on the various electronic and computerized systems used within the USPTO for searching, preparing actions, and tracking workflow. Either the workgroup or the technology center provides most of this training.

After approximately 2 months on the job, the new Class 705 examiners attend two more weeks of intensive training (called Introduction to Practice and Procedure - IPP) where they learn more aspects of searching and writing actions. Managers from the Technology Center teach the IPP course. These examiners receive training in the computer arts as they examine their own application.

Following the two week long IPP course, the new examiners begin attending weekly courses on advanced practice and procedure. Topics include affidavit practice, Patent Cooperation Treaty (PCT) procedures, and 35 U.S.C. 101 training.

2. Workgroup 2760 Training Manual

Typically, a new examiner works side by side with an experienced examiner (called a Primary Examiner) learning how to analyze an application, search the invention, and provide feedback to the applicant in the form of a written Action. In Workgroup 2760, to provide more guidance for the examiner, the managers working in cooperation with the Primary Examiners developed a training manual for the workgroup. The initial chapters of the manual focus on three critical steps: analyzing the disclosure and claims, searching for the invention, and preparing a written report (office action) to be sent to the inventor.

The intent of the training manual is to bring the new examiner up to speed with the basics of examining within 6 months. The manual also ensures that all examiners, new and experienced, are consistent in the manner they examine patent applications. The manual contains over 100 pages directed to analyzing the specification, searching, writing the action, handling amendments, responding to amendments, and samples of each. The manual is distributed to each new examiner within days of their entry into the workgroup. The Examiner Trainers provide an orientation for the new examiners and among other activities, acquaint the new examiner to the training manual. Over the two years since it’s introduction to the examiners, the 2760 training manual has been used to assist in the apprentice training of new business patent examiners.

3. Search Strategy Training

A proper search is the mainstay of the U.S. Patent system. It usually takes years of training to fully develop the skills required to ascertain a proper search strategy after analyzing an application. The examiner must be trained in the art of analyzing the scope of the claims and searching. With this in mind, the managers and Primary Examiners of Workgroup 2760 have formulated standardized base search strategies for the varying aspects of the business technology. Thus, once an examiner knows the technology and concepts cited in the application, the examiner can utilize the standardized search strategy to determine not only where to search in the U.S. Patent system, but also which data files to search in DIALOG ® and/or STN ®. While each application is unique and requires individual attention, these strategies assist a patent examiner, new or experienced, in searching the appropriate areas and finding references relevant to the application at hand.

To further assist the Class 705 examiners, a search strategy advisory panel comprised of managers and experienced examiners has been established to assist all Class 705 examiners in developing a search strategy for the application under examination. This panel may also be used to provide legal and procedural assistance.

4. Commercial and NPL Databases

During the first month of an examiner’s career, and as new systems are introduced, the USPTO through the Patent Academy teach examiners how to search the U.S. patent databases (known as EAST and WEST). Commercial databases, searched by Class 705 examiners, provide "non-patent literature" (NPL) documents such as professional journals, magazines, and conference proceedings. Some commercial databases also offer abstracts of foreign documents.

Workgroup 2760, with the support of the Technology Center and the USPTO Academy, provides both basic and advanced training to the Class 705 examiners in DIALOG ® and STN/CAS ®. These courses utilize specific examples compiled by the workgroup managers and the Examiner Trainers so the trainees are searching "real world" situations during their training.

If examiners do not wish to search the commercial databases themselves, they can request a commercial database search by the Electronic Information Center (EIC) – a branch of the USPTO’s Scientific and Technological Center (STIC) supported by Technology Center 2700. The EIC staff includes 12 professional searchers who perform the searches for these examiners. One searcher also collects new and interesting business information (including web sites) and provides them to the Class 705 examiners in a daily e-mail newsletter.

Non-patent literature (NPL) encompasses a wide variety of diverse published materials, such as textbooks, newspaper articles, magazine articles, sales brochures, professional journals, and conference proceedings. A patent examiner can find patented art in the U.S. Patent database for many business technologies. However, for rapidly emerging technologies, and/or simple accounting procedures, the U.S. Patent database is of less value. The Class 705 examiner will rely on NPL to provide the relevant art in these situations.

Begun in 1994, the EIC of Technology Center 2700 has worked hard to more readily provide NPL to the examiner. To assist the patent examiner in finding relevant NPL, the USPTO provides access to scientific and business related articles in over 900 databases through two commercial NPL database providers –

        DIALOG ®
        STN/CAS ®

All Class 705 examiners receive training in one or more of these two commercial database providers. The training is taught in two parts. The first part is an orientation into how the database operates, and how to establish a simple search query. The second part of the course is hands on with specific examples related to the business arts.

5. March 2000 Initiatives on Searching

Examiners perform a mandatory search for all applications in Class 705 to include a classified U.S. patent document search, and a text search of U.S. patent documents, foreign patent documents, and non-patent literature (NPL). The NPL searches include required search areas mapped/correlated to the U.S. classification system for Class 705.

For example, if an examiner is searching an insurance patent application classified in class 705/4, the examiner would have to search the 22 mandatory general business databases as well as the 3 mandatory databases specific to insurance. See figures NPL-1 to NPL-4 for a listing of class 705 core databases.

In addition to these mandatory databases, the examiner would search all appropriate databases from among the 900 available databases (e.g. Software Patent Institute [SPI], IEEE/IEE Electronic Library [IEL Online], etc.).

6. Technical

The patent examiner’s training does not end with procedural training. The workgroup also provides technical training to both the new and the experienced Class 705 examiner. In keeping with the latest trends in "electronic business practice", the Class 705 examiners have received training over the last two years in – Computer networking, Computer organization and architecture, Electronic Payments, Electronic Catalogs, and Computer Security

Courses in the planning stage for the year 2000 include –

        Advanced Computer Networking
        Financial Transaction (including ATM)
        Smart Cards
        General Accounting Procedures

The intent of the technical training course is to provide the examiners with current information in the various fields of endeavor, and the history of that field. In this way, every Class 705 patent examiner has the same baseline of knowledge regardless of previous training or course work.

7. Field Trips, Conferences, and Seminars

Field trips to industry are important to the examining process as such trips give the examiner first hand knowledge of the inventive process and augment technological knowledge and expertise. Such trips also enable the examiner to sit down with the inventors to see the patent process through the eyes of the customer. Field trips also enable the examiner to understand the efforts put into the inventive process and the application process by the applicant. Workgroup 2760 is planning a business field trip during the summer of 2000 to Wall Street.

Conferences and seminars are important to the examining process as they provide tutorials and information on new technology and processes. In November of 2000, Workgroup 2760 is planning to send a contingent of Class 705 examiners to New York City to the Financial Tech Conference, which covers technologies used in insurance, banking and Wall Street.

8. March 2000 Initiatives on Training

Workgroup 2760 will maintain technical currency for examiners and continue current training efforts/partnerships with industry associations and various individual corporate sponsors.

Business practice specialists will be pursued from industry to serve as a resource for examiners on common or well known industry practices, terminology, scope and meaning, and industry standards in four basic areas: banking/finance, general
e-commerce, insurance, and Internet infrastructure.

The USPTO will publish the areas of training needs for public comment and outside offers to provide such training.

D. MARCH 2000 INITIATIVES FOR ADDITIONAL REVIEW

A new second-level review of all allowed applications in Class 705 is required to ensure compliance with the mandatory search requirements, clarity and completeness of reasons for allowance, and to determine whether the scope of the claims should be reconsidered.

The sampling size for quality review by the Office of Patent Quality Review is being substantially expanded for Class 705.

The Examination Guidelines for Computer-Related Inventions and the relevant training examples are being revised in light of the State Street Bank and AT&T v. Excel Telecommunications decisions.

E. MEASURE OF QUALITY EFFORTS

The value of the quality initiatives is dependent upon associated measurement systems. Workgroup 2760 has two measuring components in place to measure their quality and the effectiveness of any initiatives implemented.

Since 1998, Workgroup 2760, as well as TC 2700, have been performing in-process reviews of applications after a first office action to assist them in determining areas for quality improvement within the business area. These reviews check numerous items in the office actions but have a particular emphasis on the field of search of the prior art and patentability determinations under 35 U.S.C. 102 and 103. The data from each of these in-process reviews is compiled and provided to the workgroup managers. Results from these reviews are used to determine areas for improvement in application prosecution. Over the past two years, several areas have been identified and addressed with appropriate training by the Tech Center Quality Assurance Specialist (QAS).