2012 PFIG Recipient Hyosang Kim

Career Administrator

Hyosang Kim
College of Arts & Sciences
Biology Major
2013 Graduation Year

Internship: US Patent and Trademark Office

Notes on the first week

This summer will surely be one of the most meaningful of my life. I am working as an extern at the United States Patent and Trademark Office in Alexandria, Virginia. Due to my background in biology, I am assigned to the Biotechnology and Organic Chemistry Technology Center (TC 1600) within the office. In the extern program, I will have invaluable opportunities to experience patent examiners' roles and duties by learning and applying the concepts, rules, and laws associated with intellectual property laws. The most exciting of the opportunities that await me is the chance to write Office Actions in response to patent applicants' applications in biotechnology field, which will be supervised and checked by current examiners. Besides learning about patent examiners' roles, I will also be able to gain a general idea of what it is like to work at the USPTO by interacting with a variety of employees.

I am very shy and get nervous very easily. However, I was unusually composed and neutral on the first day of the externship because I had already done an internship at a patent law firm in Korea. Although that internship did not teach me formal IP laws in detail, I wrote four real patent applications that included specifications, claims, drawings, and other necessary components. That experience made me feel a bit more confident than I would otherwise have felt. However, my confidence did not last very long. There are about 16 externs including me in the TC 1600. More than half of them are law school students and a good number are graduate students with master's degrees or Ph.Ds. As an undergraduate student, I was in the minority among our group. However, I was able to befriend the others very quickly, which is puzzling because it usually takes me a long time to open up to others. I was very happy to meet scientifically-minded people who are interested in IP law since I could hardly find anyone who had the same interest as mine.

With modest, humble, yet very knowledgeable teammates, I learned about examiners' roles, duties, and patent laws that are essential for examiners. Since the externship program is only about 10 weeks, the coordinator and the USPTO training academy provided us with an accelerated one-week training course. Normally training takes several months. A number of veteran examiners with established careers working at the USPTO came in and gave a series of lectures. They were challenging but I was happy to receive a formal in-depth education about my field-of-interest. The most important topics covered were rejections and objections that examiners could make in response to applicants' claims. The lectures seemed well-suited for my teammates who took courses in IP law at their law schools, but I felt a bit lost with the amount and complexity of the information presented.

Along with giving us a series of essential lectures, the externship coordinator and the training academy assigned us two trainers who helped us in labs. The two trainers, Ramsey and Helal, are Primary Examiners who are very experienced, kind, and open to questions. They helped us review complex rules, clarified issues, and briefly introduced us to writing Office Actions by using software used in the field. Other instructors came into our labs as well and gave us detailed instructions about how to use electronic tools that examiners use, such as EAST (patent search tool), eDAN (examiners' electronic docket), OACS (office action macro tool), and so on. Their training helped to facilitate our transition from lessons to the TC 1600, where we will be assigned projects and real cases next week, by providing us with more practical lessons as opposed to the more theoretical lessons provided in lecture halls.

I am looking forward to helping to write Office Actions, which I will be able to do soon. By writing them, I will gain a better understanding of examiners' roles and, most importantly, will learn how examiners approach, interpret, and compose patent claims. Obtaining knowledge about the examiners' methods will be a great asset in my personal career goal of practicing as a patent attorney. I am also looking forward to immersing myself in biotechnology patents. I will be able to see the styles and trends of these patents, which could be different from patents in other fields.

My personal and professional goals for the summer are to understand the objections and rejections to claims, which I learned about in the lectures, deeply enough to feel comfortable utilizing them when I write Office Actions in response to applicants. This will help me immensely in preparing for the Patent Bar exam, which I plan to take next year. I also would like to strengthen ties between myself and my teammates so that we maintain a strong network.

My ultimate goal is to understand the examiners' approach to patent applications. Several examiners emphasized during their lectures that examiners and patent attorneys are not in an adversarial relationship; rather, both help inventors secure their rights in the proper way. I believe learning about and experiencing patent examiners' duties will teach me efficient ways to communicate with examiners when I become a patent attorney. This, in turn, will help me serve inventors better by securing their rights in the legal way.

Midway

I remember the time I was trying to write a journal entry for the first week of my internship. I was quite overwhelmed with all the intricacies involved in the field. I am now halfway through the internship, and that initial feeling hasn’t decreased a bit. However, the work is very insightful and thought provoking. Frankly, I do not think I would have learned all the hands-on knowledge from anywhere else, because USPTO is the only place where the patent examination is being practiced in the United States.

Unlike other technology centers, the Supervisory Patent Examiner (SPE) who is in charge gave us an opportunity to get involved in the cases that have been put through the Request for Continued Examination (RCE). These cases have been rejected at least twice (both a non-final and a final rejection before an RCE, if any) by examiners, and the applicants paid extra fees to request further examinations, usually after making necessary amendments in an effort to achieve patents. These cases are called RCE cases for short. When an RCE case is assigned to our group of three interns, my teammates and I go through the procedural history of the assigned case, reading the claims, specifications, applicant side’s arguments, and examiner’s objections and rejections.

The first case was about the invention of a method to administer a hybrid hepatocyte growth factor (HGF) plasmid intramuscularly after reconstituting it from lyophilization (freeze-dry), which can increase the HGF level in the body upon administration. After reading the procedural history of the case and meeting with the primary examiner in charge of it, we searched for more prior arts to find any flaws in the applications in order to determine whether the invention is indeed patentable.

While searching for prior arts, I came across an important piece of information. I discovered that the applicant copied from his previous patent the exact same language of the plasmid construct into his claim. His previous patent was about the identical hybrid HGF plasmid. The only difference was that he was trying to obtain a patent for a method to administer it. When I submitted my discovery to the examiner, he concluded that we would allow the case to obtain a patent but only on the condition that the applicant files a terminal disclaimer, which would end his new patent term two years earlier, meaning it would end at the same time as his previous product patent. This would prevent any unjustified extension of the patent term.

However, the applicant refused to file the terminal disclaimer. Because the applicant refused to file one, we had to discard the Allowance Notices office actions on which we had been working. I was a bit scared, because the assigned case was becoming a bit complicated, contrary to my initial expectation. The examiner pointed to another flaw in the claim, explaining the 35 U.S.C. § 112 1st paragraph (written description) to us.

The applicant was claiming tens of sugars and salts in various ranges of concentrations purported to have the claimed effect of increasing HGF expression in the body. However, in his specification, the applicant disclosed the experimentation result of only one particular combination of sugar and salt in a certain concentration that has the effect of increasing HGF concentration. In other words, as an analogy, the applicant was claiming a citrus fruit, but he only proved that he possessed an orange (only one kind of the whole citrus fruit genus), which has the effect of increasing HGF expression in the body. Thus, our new office action was about the 112 and also about the obviousness double patenting, because the new claim in the current application is substantially similar to the claim in the applicant’s previous patent, although they are from different families (one being a method claim and the other a product claim). We actually had fun writing the rejections, because we felt as if we were already examiners. The real examiner thankfully accepted our office actions and incorporated a significant portion of ours into his real one, which will be sent to the applicant and, of course, becomes public.

In addition to the main task of analyzing cases and writing office actions (or rather rejections most of the time), I had many opportunities to speak with other examiners, not necessarily in the TC1600. The USPTO also holds meaningful events, such as law school admissions information sessions, which I found very helpful, as I am planning to study intellectual property law. I also had an opportunity to learn about plant patents, which is another type of patent in the United States in addition to design and utility patents. I was thankful for this exciting opportunity.

The time is flying by, and I cannot believe my internship is already halfway finished. However, the more I get my hands wet in this field, the more I thirst for knowledge about it. I am beginning to feel some vagueness, arbitrariness, and gray areas in some aspects of the law and have come to understand that this is why there are disputes over some topics in this field. This means I am becoming more emerged in the field, which I find very exciting and rewarding. I am looking forward to learning more in the latter half of my internship.

Final Reflections

I have done lots of things in this internship and time has swept by. I did not expect to write the final reflection this soon. I still feel like I should wake up early in the morning and catch the commuter train to Alexandria, but this will not be necessary for a while. Jotting down my thoughts and experiences here reminds me that I have successfully completed the internship.

I was fortunate to have a variety of work experiences at the USPTO. The most interesting task was examining patent applications and drafting office actions. I took on three more RCE cases since the middle of the summer. I worked on the second case (the genetic screening of all the samples using primer sets) with the same group members I worked with on the first case. The examiner for this particular case was hoteling, which means he was working from home. Since we did not have in-person meetings with him, we had several rounds of teleconferences to discuss the case and our approaches to it. The most interesting aspect of the second case was that I was able to incorporate arguments based on the newly released Prometheus guideline under the 35 U.S.C. § 101 (patentability) rejection. The memorandum establishing the Prometheus guideline for patent examiners was sent down on July 3, 2012. Thus, it was a very new guideline and the examiner I worked with on the second case found our arguments on it to be interesting and novel. This was the clear moment when I understood implicitly that patent law indeed keeps evolving.

By the time I embarked on my 3rd and 4th RCE cases with a different examiner, I felt much more comfortable and confident. At this stage, I was able to picture in my head what rejections and objections I should withdraw in response to applicants’ arguments and amendments and what rejections and objections I should reinstate or newly establish. I laid out my strategies for the examiner handling my 3rd and 4th cases and, after agreeing with my plans, she advised me about what form paragraphs to use, how to clarify my arguments, and where to focus. The cases concerned oral regimens and contact lens, which are personal product inventions. I highly enjoyed these cases and felt confident and happy when my examiner complimented my office actions. It also took me significantly less time to draft office actions for those two cases, as I had become more familiar with the process and with patent law.

I believe I achieved the goals I set up at the beginning of this internship. Now, I feel much more comfortable with patent law and with rejections and objections for drafting office actions. Of course, my skills are nowhere near those of real examiners or law school students, as the knowledge demanded in this field is challenging, sophisticated, and complex. However, I can proudly say that I have improved a lot over the summer in understanding the intricacies involved in patent law. Plus, after experiencing examiners’ duties, I also have a better understanding of their approaches to patent applications. This will be an invaluable asset for me when I become more deeply involved in the field of patent law.

I have made strong connections as well. My officemate and I became close friends and promised to keep in touch. Also, my initial teammates and I worked well together and agreed to maintain our cordial relationships. Without this internship, I would not have been able to make as many friends who are kind, humble, knowledgeable, and dedicated in so short a time. And how else could I, at age 21, have met people with advanced degrees and extensive life experiences as colleagues? This opportunity expanded my horizons by offering me valuable patent law experience, as well as personal and professional connections.

The internship itself was challenging, with multiple tasks on tight deadlines and complicated legal matters. However, I did my best to accomplish my assigned tasks and sought advice when necessary. Seeking advice helped me to move forward and also strengthened my ties to my colleagues and examiners. After this internship, I find patent law more compelling and I am more certain about my decision to study law and work in the field. I am applying to law school this fall to pursue my dream.

I would like to recommend that my fellow undergraduates seek out and attain an internship in their field of interest. If it’s your first internship, just completing it will open additional doors with a domino effect. If it’s your second or third internship, it will help you refine relevant skills or develop specific skills and strengthen ties in your field of interest. Most importantly, an internship will help you figure out whether a given field is indeed right for you, and finding out that a field is not right for you is not a losing game at all because this discovery will help you identify a field that better suits you. This internship helped me verify my passion for patent law, and I feel proud for having completed it.