1700

OCR transcription for search; preserved printed pages are authoritative

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1701
Examiners May Not Testify as Patent Experts
1702
Restrictions on Examiners Resigning From the
Office

1703
Official Gazette

1704
Records Kept in Examining Divisions

1705
Weekly Work Reports and Actions of Examiners
To Be Counted

1706
Transfer of an Entire Class or Subclass

# 1701 Examiners May Not Testify as Patent Experts

Inasmuch as public policy does not permit Exam-
iners to decide, as judges in the Patent Office, ques-
tions upon which they have been retained to give
opinions as expert witnesses in patent cases in the
courts, every Examiner who shall testify as an ex-
pert in a patent case pending in any court will be
dismissed, unless he shall have so testified involun-
tarily, upon compulsion by competent judicial au-
thority, and without retainer or preparation.
(Notice of March 6, 1880.)

# 1702 Restrictions on Examiners Re- signing From the Office

Extract from Rule 841, Registration of Attorney and
Agents. (g) Former examiners. No person who has
served in the examining corps of the Patent Office will
be registered after termination of his services, nor, if
registered before such service, be reinstated, unless he
undertakes (1) not to prosecute or aid in any manner
in the prosecution of any application pending in any
examining division in which he served, on the date he
left said division; and (2) not to prepare or prosecute
nor to assist in any manner in the preparation or prose-
cution of any application of another filed within two
years after the date he left such division, and assigned
to such division, without the specific authorization of
the Commissioner. Associated and related classes in
other divisions may be required to be included in the
undertaking or designated classes may be excluded. In
case application for registration or reinstatement is
made after resignation from the Office, the applicant
will not be registered, or reinstated, if he has prepared
or prosecuted, or assisted in the preparation or prosecu-
tion of any such application as indicated in this
paragraph.

## 1703 The Official Gazette

The Official Gazette, which appears every
Tuesday, contains the name and address of the
applicant, and of the assignee, if any, the filing
date, and serial number of the application, the
patent number, the title of the invention, the
number of patent claims, and the class and sub-

# Miscellaneous

class, one of the figures of the drawing (if any),
and one or more claims, of every patent in a
week's issue. In the case of a reissue patent
there are published the additional data of the
serial number and date of the original patent
and original application; and in the case of the
design patent, the term of the patent.

Trade Marks published to afford opportunity
for filing notice of opposition and Trade Mark
Registrations Granted are also printed in the
Gazette.

The above material forms the body of the
Gazette; but as this is the only official periodical
of the Office, the first few pages of the Gazette
are devoted to other matters, such as; notices
to parties the Office has been unable to reach by
mail, disclaimers, adverse decisions in inter-
ferences, a statement of the condition of work
in the Patent Office, changes in Rules, disbar-
ment of attorneys, and selected decisions of the
Board of Appeals, of the Commissioner of
Patents, and of the United States Courts, and
all of the decisions in patent cases of the Court
of Customs and Patent Appeals and of the D. C.
Court of Appeals, for the District of Columbia,
together with a list of adjudicated patents and
notices of patent suits. These pages, in addi-
tion to appearing in the bound volume of each
number of the Gazette, are published in leaflet
form for separate distribution. One of these
O. G. leaflets is placed on each Examiner's desk
when the Official Gazette is published.

The subject matter of the leaflets is arranged
by one of the Law Examiners, but the arrange-
ment of the indexing of the Gazette is done by
the Issue and Gazette Branch.

## 1704 Records Kept in Examining Divi- sions

The principal records kept in the examining
division are two sets of cards, Form PO-205
which are arranged numerically and Form
PO-206, of which those awaiting action are
arranged by individual examiners. Each card
contains data concerning the applications that
have been assigned to the division, identified
by name of applicant, title of invention, serial
number and filing date. Notation of attorneys
is also made. Each set of cards also shows the
name of the assistant examiner to whom the
examination is entrusted and the class and sub-
class of prior art considered most pertinent for
search, the history of each case in the matter
of the successive actions taken in that division,
and finally the patenting or abandonment or
transfer of the case.

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There is also information available concern-
ing cases on appeal, cases involved in interfer-
ence, secret cases, patentability report cases
temporarily in or out of the division, cases
involving classification questions or require-
ments of division and applications or references
charged out.

The Examiner's Work Record (Form PO-
267) from which the Weekly Work Report is
prepared (See 1705), contains a list by Serial
Numbers of all applications for which the
individual examiners are given credit.

## 1705 Weekly Work Report (Form PO-290) and Actions of Exam- iners to be Counted Thereon

The weekly work report reflects the condition of
the examining division as of the close of business on
Friday and it must include all cases received and all
cases acted on from 8:30 a. m. Monday through 5:00
p. m. Friday.

Examiners are directed to count at the end of
each week all cases in which actions have been pre-
pared (that is, the actions that have been written
in long hand or dictated) irrespective of whether
they have been typed or mailed. The dates of the
various desks shall be advanced and reported as the
actions are counted. The oldest dates of the divi-
sion reported under "Remarks" shall not be advanced
except as the actions are mailed (Notice of Decem-
ber 30, 1949, Revised).

The following only are counted as actions:

1\. Regular actions in new and amended cases.

2\. One action for each application which consists
only in suggesting claims for interference and one
for each application in declaring each interference.

3\. Examiner's statements in answer to petitions
from his actions.

4\. Examiner's answers on appeals.

5\. Transfers of individual cases which are up for
action previously entered in the Examiner's register.
Where an entire class or subclass is transferred,
credit for actions is not given the assistant Exam-
iners to whom such cases are respectively assigned.

6\. Decisions on motions in interference.

7\. Patentability reports.

8\. Answers to petitions to revive.

9\. Letter advising of entry or non-entry of amend-
ment after final action.

10\. Letters pertaining to the publication of ab-
stracts, even though it is decided not to publish the
abstract and the papers pertaining thereto do not
become part of the application file. See 711.06 (b).

11\. Letter advising applicant that express aban-
donment has taken place and the file will be sent to
the Abandoned Files in due course.

12\. Declaration or redeclaration of an interfer-
ence.

By "regular" action is meant rejections, including
requirements for division; letters or allowances by
the Examiner as the result of the examination of a
new application or the reconsideration or re-exam-
ination of an amended application; requirements
for formal changes or corrections; actions of the
Examiner applying or carrying into effect final de-
cisions in interference, either on motions or on
priority; actions on cases remanded by an appellate
tribunal for reconsideration in view of affidavits or
proposed further amendments by appellants. Where
more than one amendment is filed in any case before
it is reached for consideration of the first of such
amendments, only one action will be counted in
connection with all such amendments.

The following should not be counted as actions:
Examiner's Amendments; supplemental actions
citing additional references or correcting the data
of references of record; letters to Law Examiner
(Rule 202); letters acknowledging receipt of com-
munications (new or supplemental oaths, orders for
corrections of drawings, etc.), which do not bring
the application up for action; and answers to peti-
tions to make cases special, amendments under
Rule 312, and to status letters.

Examiners are expected to make a reasonably
careful examination of applications when they are
first received in their divisions to determine the
proper classification before entering them on the
register.

Applications will not be entered on the Examiner's
Docket Cards merely for the purpose of counting
them as actions by transfer.

(Extract from Order 3179, Revised.)

The report includes an itemization of "Hours
Not Applied to Examining Work." Assistant
Examiners should check this in order to make
sure that they are properly credited with such
time.

See also the Clerk's Manual, sections 2-2.1
and 2-2.2.

## 1706 Transfer of an Entire Class or Subclass

Where an entire class or subclass is trans-
ferred from one division to another, follow the
procedure in the Clerk's Manual, section 14-5.

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