1700

OCR transcription for search; preserved printed pages are authoritative

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# Chapter 1700

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

1703
Official Gazette
Records Kept in Examining Divisions
1704

1705
Examiner's Work Report and Actions To Be
Counted

## 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 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.

See also 309.

# 1703 The Official Gazette

The Official Gazette, which appears every
Tuesday, contains the name and address of the

# Miscellaneous

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-
class, one of the figures of the drawing (if any),
except in the case of a plant patent, and one or
more claims, of every patent in a week's issue.
In the case of a reissue patent there are pub-
lished the additional data of the serial number
and date of the original patent and original ap-
plication; and in the case of the design patent,
the term of the patent. Various trade-mark
notices and publications are also included.

The above material forms the body of the
Gazette; but as this is the official journal relating
to patents and trade-marks, a 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, certain adverse de-
cisions in interferences, a statement of the con-
dition of work in the Patent Office, changes in
Rules, disbarment of attorneys, and selected
decisions of the Board of Appeals, of the Com-
missioner of Patents, and of the United States
Courts, and all of the decisions in patent cases
of the U. S. Court of Customs and Patent Ap-
peals and of the U. S. Court of Appeals, for the
District of Columbia Circuit, together with a
list of adjudicated patents and notices of patent
and trade-mark suits. These pages, so far as
they relate to patents, are also published in leaf-
let form for separate distribution. One of these
O. G. leaflets is placed on each Examiner's desk
when the Official Gazette is published.

## 1704 Records Kept in Examining Divisions

The principal records kept in the examining
divisions 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-

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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 division, cases
involving classification questions and applica-
tions or references charged out.

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

In place of the "Examiner's Weekly Work Re-
port" (PO-290) there was substituted a "Periodic
Report of Patent Examining Performance" (PO-290
Rev.). This new report is prepared and submitted
on a monthly basis.

This new report was evolved in order to obtain
more comprehensive information relative to work-
load conditions and certain phases of Examiner per-
formance, e. g., by regularly including, in addition
to the information formerly furnished, an inventory
of all pending applications and a report of each
Examiner's disposals. The report is designed to
facilitate the reporting, computing, and recording of
essential data in a more effective manner to better
show the effect of Examiner's efforts on the work
on hand. To this end, transfers and patentability
reports are no longer counted as actions, but credit
is given an Examiner for the time spent in such
efforts.

In addition to the Periodic Report, a less detailed
"Examiner's Progress Work Report" (PO-411) cov-
ering shorter periods may be called for in accordance
with a planned schedule, details of which are an-
nounced in a memorandum from the Executive
Examiner. (Extract from Notice of November 17,
1953.)

The periodic report reflects the condition of the
examining division as of the close of business on the
last working 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 various desks shall be ad-
vanced and reported as the actions are counted.
The oldest dates of the division reported shall not
be advanced except as the actions are mailed.
(Notice of December 30, 1949, Revised.)

The following only are counted as actions:

1\. Regular actions in new and amended cases.
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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\. Decisions on motions in interference.

6\. Answers to petitions to revive.

7\. Letters advising of entry or nonentry of amend-
ment after final action.

8\. Letter advising applicant that express abandon-
ment has taken place and the file will be sent to the
Abandoned Files in due course.

9\. Declaration or redeclaration of an interference.
By "regular" action is meant rejections, including
requirements for restriction; letters or allowances
by the Examiner as the result of the examination of
a new application or the reconsideration or reexam-
ination of an amended application; requirements for
formal changes or corrections; actions of the Exam-
iner applying or carrying into effect final decisions
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 con-
nection with all such amendments.

The following should not be counted as actions:
Examiner's Amendments; supplemental actions cit-
ing additional references or correcting the data of
references of record; letters to Law Examiner (Rule
202); letters acknowledging receipt of communica-
tions (new or supplemental oaths, orders for correc-
tions of drawings, etc.), which do not bring the ap-
plication up for action; and answers to petitions to
make cases special, amendments under Rule 312, and
to status letters. Transfers of individual cases and
patentability reports are not counted as actions, but
credit is given for the time spent.

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. (Extract from Order 3179, Revised.)

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

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