1700

OCR transcription for search; preserved printed pages are authoritative

# Chapter 1700

1701 Examiners Not to Express Opinion on Validity
nor Testify as Patent Experts
Restrictions on Examiners Resigning From the
Office

1702

1703
Official Gazette

1704
Records Kept in Examining Groups

1705
Examiner's Work Report and Actions To Be
Counted

# 1701 Examiners Not To Express Opin- ion on Validity Nor Testify as Patent Experts

Inasmuch as public policy does not permit
Examiners to decide, as judges in the Patent
Office, questions 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 expert in a patent case
pending in any court will be dismissed, unless
he shall have so testified involuntarily, upon
compulsion by competent judicial authority,
and without retainer or preparation. (Basis:
Notice of March 6, 1880.)

Congress, in 35 U.S.C. 282, has endowed
every patent granted by the Patent Office with
a presumption of validity. Public policy de-
mands that every employee of this Office re-
frain from expressing to any interested person
any opinion or view as to the invalidity of any
U.S. Patent. The question of validity or in-
validity is exclusively a matter for the courts
to determine. Each member of the examining
corps is cautioned to be especially wary of any
inquiry from any person outside the Patent
Office (including any employee of another
government agency), the answer to which
might indicate that a particular patent should
not have been issued.

Whenever an examiner is asked or sub-
poenaed to testify in a suit concerning a pat-
ent, trademark registration, or application for
either, he is directed to report that fact im-
mediately to the Solicitor. (Basis: Notice,
May 4, 1959.)

Examiners are cautioned against answering
inquiries from any person outside the Patent
Office as to whether or not a certain reference
was considered and, a fortiori, whether or not
a claim would have been allowed over that
reference. This applies to anything in the
patented file, including the extent of the field

# Miscellaneous

of search and any entry relating thereto. The
record of a patented file must speak for itself.
Practitioners can be of material assistance in
this regard by refraining from making such in-
quiries of members of the examining staff. An-
swers to inquiries of this nature must of neces-
sity be refused, and such refusal should be
considered neither discourteous nor an expres-
sion of opinion as to validity. (Basis: Notices
of May 18, 1961 and October 21, 1960.)

Also, Examiners are reminded that, in view
of the long established policy of the Patent
Office to refuse to permit members of the staff
of the Patent Office to testify in patent suits,
they should, before allowing an application, de-
termine that the written record is accurate and
complete.

## 1702 Restrictions on Examiners Re- signing From the Office

Extract from Rule 341, 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.

In the above rule, "examining division" is
interpreted as synonymous with "examining
group".

See also 309.

# 1703 The Official Gazette

The Official Gazette reports every Tuesday
the patents, design patents and trademark reg-

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istrations issued on that day. As to each pat-
ent, the following information is given :

(1) the name and (2) the city and state of
residence of the applicant with the Post Office
address in the case of unassigned patents, and
(3) the same data for the assignee, if any, (4)
the filing date, and (5) the serial number of the
application, (6) the patent number, (7) the title
of the invention, (8) the number of claims, (9)
the class and subclass, (10) a selected figure of
the drawing, if any, except in the case of a
plant patent, and (11) a typical claim. In the
case of a reissue patent there are published the
additional data of the number and date of the
original patent and original application; and
in the case of a design patent the term of the
patent.

Various trademark notices and publications
are also included.

The Gazette includes a section devoted to
reports of patent and trademark decisions and
notices of a variety of matters; disclaimers,
adjudicated patents, patent and trademark
suits, certain adverse decisions in interferences,
the condition of work in the Office, changes in
rules, disbarment of attorneys, and notices to
parties not reached by mail.

The patent and trademark decisions in this
section include in particular those of the
United States Court of Customs and Patent
Appeals, the U.S. Supreme Court, and the
U.S. Court of Appeals for the District of
Columbia Circuit, and selected decisions of the
Commissioner of Patents and Board of Ap-
peals. These decisions constitute such impor-
tant statements of the law that the notice and
decision section is separately printed in leaflet
form and is distributed to the Examiners.

# 1704 Records Kept in Examining Groups

The principal records kept in the examining
groups 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 groups, 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 successive actions taken, and finally
the patenting or abandonment or transfer of
the case.

Miscellaneous records are also kept relating
to matters such as cases on appeal, cases in-

volved in interference, patentability report
cases temporarily in or out of the groups,
cases involving classification questions and ap-
plications or references charged out.

# 1705 Examiner's Work Report and Actions To Be Counted Thereon

The "Examiner's Monthly Production Re-
port" (PO-290 Rev.) is intended to present
more comprehensive information relative to
workload conditions and certain phases of
Examiner performance, e.g., by regularly in-
cluding, in addition to the information for-
merly furnished, a report of each Examiner's
disposals.

Shorter periods are covered in the "Exam-
iner's Weekly Production Report" (PO-411).

The Monthly Report reflects the condition of
the Examining Group on the last day of the
month and it must include all cases received
and all cases acted on and disposed of during
that month.

Examiners are directed to count all cases in
which actions have been prepared (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 vari-
ous desks shall be advanced and reported as
the actions are counted. The oldest dates of
the group reported shall not be advanced except
as the actions are mailed. (Basis: Notice of
December 30, 1949.)

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 inter-
ference and one for each application in declar-
ing each interference.

3\. Examiner's statements in answer to peti-
tions from his actions.

4\. Examiner's answers on appeals.

5\. Decisions on motions in interference.

6\. Letters advising of entry or nonentry of
amendment after final action.

7\. Letter advising applicant that express
abandonment has taken place and the file will
be sent to the Abandoned Files Unit in due
course.

8\. Declaration or redeclaration of an inter-
ference.

By "regular" action is meant rejections, in-
cluding requirements for restriction; letters or
allowances by the Examiner as the result
of the examination of a new application or
the reconsideration or reexamination of an
amended application; requirements for formal
changes or corrections; actions of the Exam-
iner applying or carrying into effect final de-
cisions in interference, either on motions or on

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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 ac-
tions: Examiner's Amendments; supplemental
actions citing additional references or correct-
ing the data of references of record; letters
to Law Examiner (Rule 202) ; letters acknowl-
edging receipt of communications (new or sup-
plemental oaths, orders for corrections of
drawings, etc.), which do not bring the appli-
cation up for action; letters stating that the

Notice of Allowance will be sent in due course
(Sec. 1207) and answers to petitions to revive
or to make cases special, amendments under Rule
312, and to status letters. Transfers of individ-
ual cases and patentability reports are not
counted as actions, but credit is given for the
time spent.

Examiners are expected to make a reason-
ably careful examination of applications when
they are first received to determine the proper
classification before entering them on the reg-
ister. (Basis: Order 3179 and Notice of De-
cember 14, 1961.)

Non-Examining time is listed under "Re-
marks". Assistant Examiners should check
this in order to make sure that they are properly
credited with such time.

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