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

1702
Restrictions on Examiners Resigning From the
Office

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.

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.

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
of search and any entry relating thereto. The
record of a patented file must speak for itself.

## Miscellaneous

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.

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

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(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 examiner to whom the examination
is entrusted or the assigned docket designation
and the class and subclass considered most per-
tinent for examination, the successive actions
taken, and finally the patenting or abandon-
ment 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 cut.

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

All reporting of examiner's production,
docket, and time activities is on a bi-weekly
basis corresponding to the period covered by the
Time and Attendance Reports, PO-516.

Data Processing Branch makes the following
reports for each art unit :

Examiner's Bi-Weekly Docket Activity Re-
port, PO-290 (rev.)-This report covers infor-
mation regarding the new and amended appli-
cations awaiting action. The information is
from the PO-690 (rev.) prepared by the clerk
and from PO-526 Case Disposition Record
Cards prepared by the examiner.

Examiner's Bi-Weekly Time and Activity
Report, PO-912-This report is based on the
examiner's Case Action Record, Case Action
correction, Case Disposition, and Substitution
Cards, PO-525, PO-531, PO-532 and PO-533,
respectively.

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.

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-

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iner applying er 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 ac-
tions: Examiner's Amendments; supplemental
actions citing additional references or correct-
ing the data of references of record; letters
acknowledging receipt of communications (new
or supplemental 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
register.

Non-Examining time is listed on Examiner's
Periodic Record of "Other" Time PO-690E
(rev.). Examiners should check this in order
to make sure that they are properly credited
with such time.

### 1710 U.S .- German Search Exchange

The German and U.S. Patent Offices have ini-
tiated a continuing program for exchanging
search results in cases where applications for
the same inventions are filed in both countries.

In general, the plan provides that where an
application is filed in the U.S. and LATER a
corresponding application claiming U.S. prior-
ity is filed in Germany (U.S. origin applica-
tion ), the U.S. search results are sent to the Ger-
man Patent Office after the first action on the
merits. Conversely, the U.S. Patent Office re-
ceives a list of references cited by the German
examiner in his action on an application filed
first in Germany and later in the U.S. (German
origin application).

The Office of Patent Services, primarily
through the newly set up Foreign Exchange
Section, is responsible for processing all matters
in connection with the exchange program in co-
operation with the examining Groups.

### 1710.01 U.S. Origin Applications

The German Patent Office will identify Ger-
man applications which refer to a prior appli-
cation for patent in the U.S. for the same in-
vention, and request a search report from the
U.S. This request is on a printed sheet (blue),
designated by them as Form B, which gives the
serial number of the U.S. application, and
the Application Number of the German
application.

The Foreign Exchange Section of Special
Services receives and processes the forms.
Where the application has been disposed of or
has already received an action on the merits, the
Foreign Exchange Section will prepare from
the files the list of citations for the German
office. If the U.S. application has not yet been
acted on, a printed Notice is placed in the inside
left section of the file jacket to advise the Ex-
aminer and the Examining Group that the
search results will be furnished Germany when
the action is written. This Notice also contains
information to assist the Group in handling
such cases.

The application will be acted on by the ex-
aminer when its regular turn is reached except
that if it is over 24 months old or when it be-
comes 24 months old, it is to be made "Special"
for the purpose of the first action, or if it is
"Special" for some other reason.

When preparing the first action on the merits
which contains reference citations, the exam-
iner, when filling out PO-892, Notice of Refer-
ences Cited, will check the box at the bottom
marked "Foreign Exchange" and will detach
the Notice and include it in the folder with
PO-892 which is forwarded to the Reference
Order Center.

If the first action on the merits does not cite
any references, or if the application is being
passed to issue on the first action, the clerk will
check the appropriate place on the Notice and
return it to the Foreign Exchange Section.

### 1710.02 German Origin Applications

In the case of a U.S. application which refers
to a prior German application for the same in-
vention, German search results are requested by
the Foreign Exchange Section when the U.S.
applications are received in Application
Branch. A form, PO-952, identifying the U.S.
and German applications is completed and for-
warded to the German Patent Office. At the
same time, a Notice containing information to
assist the Group in handling the application is
inserted in the left inside section of the file
jacket to advise the Group that search results
may be expected.

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In addition to the newly filed applications,
cases already pending are included in the pro-
gram. The Foreign Exchange Section will
identify and locate applications in the Group,
insert a copy of the Notice in the file, and send a
request for search results on PO-952 to the
German Patent Office.

If the examiner notices an application in
which there is a prior filed German applica-
tion but which has not been marked by placing
therein the Notice, he may in his own discretion
request the German search results through the
Foreign Exchange Section, if there is sufficient
time before the case is to be reached for action.

The search report, on Form PO-952 (Form
A), when received from Germany, together
with copies of any references cited, will be for-
warded to the Examining Group to be placed
in the file, by the Foreign Exchange Section.

Normally, the search report is expected to be
received before the U.S. application is reached
for action in regular course. If it is not in the
file of the application when it is reached for ac-
tion, an inquiry may be made of the Foreign
Exchange Section to ascertain if it has been
received and is in process. But otherwise ex-
amination of the application is not to be de-
ferred to await a search report. If one is re-
ceived after the examiner's action, the references
are to be considered in the same manner as refer-
ences being considered for citation in the second
action.

When the Examiner is acting on a case in
which a search report citing references has been
received from Germany (copies of the refer-
ences will have been placed in the file), he is to
proceed with his own search and examination of
the application in the usual manner, but taking
advantage of any assistance furnished by the

references cited by the German examiner; for
example, features or anticipations adequately
supplied need not be searched for again. The
references cited by the German examiner, as
well as any additional ones found, are to be con-
sidered, and if pertinent, cited and used in the
usual manner. References should not be cited
merely because they have been listed by the Ger-
man Patent Office.

As indicated in the joint report published at
838 OG 1225-6, May 23, 1967, an exchange at the
present time cannot completely replace the nec-
essity for each office to conduct its own search.
In particular, it should be noted that a U.S.
patent which issued after the German filing
date, but which has an earlier filing date, cannot
be used as a reference in the German case and
that the German examiner presumably will not
have searched such patents, assuming that they
had reached Germany. Hence, particular at-
tention should be paid to searching recent U.S.
patents. Also, the German examiner searches
according to a classification system developed
along principles somewhat different from the
U.S. classification, and references in related or
analogous arts are not used to the same extent
as here.

In recording the field of search on the file
jacket, the examiner should indicate in the usual
manner those sub-classes in which he has made
his usual search; where he has found it neces-
sary to make only a partial or updating search,
the listing of the sub-classes thus searched
should be so marked.

The search report and the Notice are removed
from the file when the application is disposed
of and retained in the Foreign Exchange
Section.

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