2013 PFIG Recipient Michele DeRieux
School of Engineering and Applied Science
Biomedical Engineering Major
2015 Graduation Year
Internship: United States Patent & Trademark Office
Notes on the first week
This summer I will be serving as a patent examiner extern at the United States Patent and Trademark Office (USPTO) in Alexandria, Virginia. My position will ultimately fall within Technology Center (TC) 3700 which encompasses biomedical technologies. At the end of my initial training I will work within Art Unit 3762, concerned with Light, Thermal and Electrical Applications of Surgery.
To provide some background, the USPTO is a government agency under the Executive Branch, specifically classified under the Department of Commerce. The USPTO is responsible for the protection of intellectual property (IP) through the examination and issuance of patents and trademarks. A patent, in its most general meaning, is a contract, which defines ones personal property. Through a series of claims in a patent application, an inventor lays out the functional, structural and procedural components of their invention. Then, if approved by the USPTO, an issued patent serves as protection of the inventor against infringement by others.My first week at the USPTO was comprised of numerous training sessions, which at times seemed overwhelming. Within these sessions, I was introduced to the legal statutes governing the agency, the methods and procedures by which I would be examining and submitting office actions to applications and the computer services, programs and applications that I would be using to conduct my research. At times the statutes and grounds for rejection of patent applications seemed vague and the number of examination requirements intimidating. In an extern class split almost 50/50 of law students and undergraduate engineers, at first I felt under qualified and disadvantaged. However, by the week’s end, I felt more confident in my abilities to carry out the externship and work alongside primary patent examiners successfully.
I am most looking forward to receiving my patent application docket and jumping right into examination. Although I believe writing office actions and submitting cases to my supervisor will at first be stressful, I am excited for the chance to learn and practice my skills. Putting new skills and knowledge to use, is in my opinion, one of the most rewarding things a person can do.
Looking at the weeks ahead, I would like to set several personal and professional goals to guide my experience. Personally, I would like to continue to meet my colleagues and understand their academic accomplishments and goals, break further of out my shell and become involved and confident in the workplace, as well as, enjoy each day of my experience. Professionally, I hope to acquire as much knowledge as possible regarding the legal and technical aspects of patent examination, make connections with my colleagues and supervisors, utilize my acquired skills in an efficient and satisfactory way, and at the end of my experience, feel proud of the work I have produced at the USPTO.
It’s difficult to believe I’m halfway through my experience at the USPTO. After a whirlwind first two weeks of training, finally getting settled into my daily, working routine was a nice change of pace and has introduced many new opportunities and challenges.The first day out of training I got a chance to meet with my supervisor—or “SPE” as they are called here at the office—about the cases I would be examining, the resources at my disposal and the colleagues I would be reporting to and working with. I was assigned to work under a primary patent examiner named William who would be responsible for guiding me through the examination process. To provide some background on titles within the office, “primary examiners”, or just “primaries”, are the most experienced and senior examiners at the office. They are GS 14 grade levels and have the ability to approve and submit non-final and final office actions without approval from a SPE. In other words, a primary has “signatory authority”. SPE’s have attained GS 15 grade levels and assume an advising, administrative role. They typically oversee a large number of examiners, anywhere from 15 to 40, depending on the grade level of the examiners they advise and the complexity of applications within their given art unit.
After training, I hit the road running. I met with William and he docketed a series of five cases intended for me to work on over the summer. The applications ranged from electrical, pacing devices to methods for treating chronic pain. It would be my job to thoroughly read through and examine the cases, research the applicable prior art, and construct non-final office actions that would be mailed, following approval from my primary, to the applicants. Sorting through the applications and coming to the realization that I would be writing patent rejections to inventors armed with powerful attorneys and backed by large-scale, medical companies was both terrifying and exhilarating. I couldn’t believe the agency would let an undergraduate engineer take on cases of such magnitude; cases with both legal and economic potential.
After diving into my first case, I realized I had a lot more touching up to do on the statutes and guidelines that would serve as the foundation on my rejections. I spent the next week rigorously searching for prior art regarding the first case and reading the Manual of Patent Examining Procedure (MPEP) for guidelines. To shed some light on such procedures, in general there are four major statutes that guide examiners in rejections of patent applications and they arise from United States Code Title 35 (e.g. 35 U.S.C.) concerning patent law. The first section 35 U.S.C. §101 concerns patentable subject matter. §101 has three basic requirements: It protects against double patenting, mandates that the claimed invention falls within one of the categories of a process, machine, manufacture or composition of matter, and mandates that the invention is useful and has a utility that is “specific, substantial and credible”. §102 regards “anticipation” and protects the novelty of a patent (e.g. making sure the claimed invention does not already exist). §103 regards “obviousness” and safeguards non-obvious subject matter as being eligible for a patent. Some regard §103 as the safe keeper of a patent’s prestige and value. Lastly, §112 introduces three important concepts; the written description, the enablement requirement, and the best mode requirement. All three of these legal concepts relate to public disclosure of an invention and ensure that one with an ordinary skill in the art could understand and reconstruct the claimed invention. §112 rejections are often the most difficult to spot for a junior examiner, but they help to ensure that an invention is disclosed in the most particular and accurate way possible.
Adjusting to the professional hours of early morning commutes and eight to nine hour workdays has been one of the challenges I’ve come across thus far. As compared to the life of a student, where the hours per day spent in class, on homework and with peers is largely up to one’s discretion, the professional world has a much more rigid schedule. However, it has been enjoyable having work separated from home. To not be responsible for projects or tests outside of the office has been wonderful. Some of the other challenges of the internship have been knowing how to use appropriate discretion and judgment when interpreting cases. Often times, as with most things, cases can be ambiguous. Many questions arise as to what parts need to be addressed and what parts are allowable. While the statutes are meant to serve as guidelines, they don’t write the rejections themselves; that is ultimately up to the examiners. In response to this challenge, I’ve learned to ask questions, lots of questions. I’ve also learned to work more collaboratively with my peers, and coming from an engineering program that already emphasizes group collaboration, I was thrilled to see that kind of teamwork in a professional setting. Lastly, I’ve come across the challenge of deadlines – more ambiguous deadlines – which might seem like a humorous challenge. In the academic world, a deadline is usually as concrete as possible. For example, a project is due one week from today by 4pm and no late work will be accepted. Here are the office, and I would assume at many other professional work environments, deadlines are more paced, workload sensitive and ultimately, flexible. I have felt as though I have a generous amount of time to complete and submit quality work and, moreover, the initial challenge of concrete deadlines has become somewhat of a silver lining.
At the halfway point of my experience, I have completed two cases from start to finish and I have begun prior art searching on the third. Due to the security and privacy of patent applications yet to be published, I am unable to discuss the individual cases in any sort of detail. However, I can say that finishing these cases has been testing, but immensely rewarding. Working under my primary William has been remarkably helpful and informative. I feel like I’m finally starting to understand the ins and outs of the patent application process. I have also had the chance to sit in on several Patent Trial and Appeals Board (PTAB) hearings. These are internal ‘courts’ at PTO where cases that are petitioned are reexamined by a board of judges. Observing a case argued through an attorney’s perspective was truly insightful and the questions and opinions of the board provided great insight into the true value of patents. One of the cases, specifically argued by Google, demonstrated the incredible sway the PTO holds in facilitating commerce and economic growth of companies globally. Furthermore, getting to know my peers and taking part in agency social events targeted to our extern class has been enjoyable. I have no doubt that there is much left to discover over my last weeks at the office.
In my last weeks at PTO I got the opportunity to experience some new things, but also to put to use the skills I had acquired since I first began. I found that writing office actions and examining cases became quicker, less challenging and more insightful. Furthermore, the stress of meeting with my SPE or reporting back to William on my progress towards a case had almost disappeared. I also found that I was earning greater trust from my peers and coworkers. As an example of this growing trust, as my last case I was given a final office action to work on (as opposed to a non-final office action) in which I wrote a response to applicants’ arguments (typically crafted by an attorney). Ultimately, within my response, I rejected the patent application on final grounds. Based on the final rejection I composed, the only way the applicants’ could ever receive a patent for the invention they disclosed would involve a difficult series of appeals; first internally at PTAB and then if needed, in the federal circuit courts. Getting the chance to research and respond to an argument put forth by applicants’ attorney was challenging, yet empowering. In writing the final rejection, I felt fully justified in the assertions I made as well as well versed in the technology of interest.
Much like the first half of my experience, I continued to take advantage of opportunities provided at the office. I attended several more PTAB hearings concerning electrical and chemical invention disputes. Often times the technologies were complex in their art and it was difficult to follow exactly what the invention comprised, but for the most part I was able to understand where the attorney and examiner disagreed (e.g. how the invention was or was not significantly different from the prior art). Furthermore, I took part in a Supreme Court tour that was arranged for our extern class. This was not my first trip ever to the Court but my experience at PTO, where the commerce side meets the judicial side, gave me a new appreciation for the federal system. Specifically, it gave me a greater appreciation for the fine line the Court system must walk in interpreting and deciding cases. Patent infringement cases are some of the must common Supreme Court cases, although they typically do not get the most publicity.
Another unique opportunity given to me in my last few weeks was the chance to conference in on two appeal briefs. These are in-person or telephonic conferences between an examiner, his or her SPE, and the applicant’s attorney prior to a PTAB hearing. Such an appeal conference is meant to be one last opportunity for the parties of interest to fully understand the other’s perspective and points of disagreement. If possible, the conference can be a chance for one party to amend, but frequently it is simply used for clarity before the attorney goes in front of PTAB. The two cases I got to listen in on for appeal brief primarily centered on language disagreements in the claims. For example, does the term “substantially circular” encompass a U-shaped bone screw attachment? Or does “graphic” mean the same thing as “icon” in the context of placing electrode leads? While such questions may seem finicky, in the world of patents it may come down to just one word to decide if a patent is allowable or not. Precise language is critical because the name of the game is the claim.
On my last day at the office, my SPE invited me to lunch and I had a chance to reflect on my experience and thank her for her guidance. Just over two months from my start date, I was able to reflect on how I had met my initial challenges and goals by becoming close with the other externs, engaging in agency social events and tours, as well as making time to watch PTAB hearings and get involved at the office. Following lunch as I cleaned out my workspace, I read over the four cases that I had completed and realized how well versed I had become in the language of patents. The statutes that at first felt overwhelming were now simpler guidelines and the stress of responding to applicants had eased dramatically. Ultimately, I was proud of the work I had accomplished.
On final thought, this experience has taught me that an internship can not only be an academic, career building opportunity, but also a chance to learn about yourself. Most fundamentally, I have learned that I love to work with others and I love a good challenge. Professionally, my career path will likely take me away from PTO, however the confidence, skills and connections I have made from my externship will help me wherever my path may lead. The experience has also confirmed my passions in technology and business. Together these two fields no doubt will continue to evolve and grow together in exciting ways, especially concerning biomedical technologies. When I started considering internships last fall, the Patent and Trademark Office would have been the last place I would have thought to look, but now I cannot imagine a better experience. Staying open and on the lookout for internships is critical because sometimes a great one is just an application and a metro ride away.