IV. Resources in Transition

Resources in Transition

Patent Examiners

Primary and Non-Primary Examiners
Internal Transfers

Hiring

2000 Hiring - Preparation for Transition

Results to Date of Efforts to Increase Examiner Resources

Profile - An Appropriate Balance
Business Industry Experience - Shifting the Knowledge Base

Scientific & Technology Information Center - Electronic Information Center (STIC-EIC)

A component of addressing the needs of an emerging technology is expansion of available resources commensurate in scope to the expansion of the technology. This is particularly true in the people resource intensive profession of patent examining. Additional resources can only help the Office to continue to meet its statutory mandates. The key resource is the patent examiner who is supported by the other resources of the USPTO.

1. Primary And Non-Primary Patent Examiners

Patent examining is a profession learned through 5 to 7 years of on the job training reinforced by classroom training. It is analogous to the master-apprentice system. Primary Examiners and their managers are the Office’s master patent professionals. These master professionals are delegated signatory authority from the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office to grant patents for the United States. Non-Primary patent examiners are the Office’s apprentices in the process of learning their profession. All work by a non-Primary Examiner must be reviewed and signed by a person with signatory authority. Class 705 began Fiscal 1998 with three Primary Examiners and nine non-Primary Examiners.

Patent examiners are the key resource of Class 705. Critical to the managed growth of this technology is an adequate supply of this key resource.

2. Internal Transfers

The first step in expanding the examining resources available to Class 705 was to find individuals with appropriate backgrounds among the current examining corps. Since late 1997, a number of Examiners volunteered to transfer to Class 705. This group included several electrical engineers each with a Masters of Business Administration, an examiner with banking management experience, and a Ph.D. in Information Science with 30 years work experience developing business information systems.

B. HIRING

2000 Hiring - Preparation for Transition

Workgroup 2760 will hire sufficient Class 705 examiners in FY 2000 to cover attrition and modest expansion. However, expansion of the number of Class 705 examiners will not be the primary focus for this year.

Class 705 is in the first stage of a transition period. In 1998, the State Street decision triggered an awareness of the "business method claim" as a viable form of patent protection. As noted in Section II above, such patents express the practical application (useful, concrete and tangible result) of technology that is the essence of an innovation. This segment of Class 705 is transitioning away from technology towards the end result the inventor is attempting to achieve with that technology. Inventors are changing the approach to how they choose to describe their inventions. This change is in turn driving a shift in the knowledge base of the Class 705 examiners.

However, it must be noted that most patent applications being examined in Class 705 still strongly reflect the implementing or enabling engineering (see Section III B) used to carryout the practical application being claimed. Databases, communication systems, circuits, and wires (i.e. electrical and computer engineering) will continue to be a dominant feature of business data processing for generations to come. A business data processing method is implemented on a data processing machine which is still reflected in the patent application. The USPTO will also continue to grant patent protection for the business data processing machine itself. See Appendix G for a sample of patents issued on May 30, 2000.

In FY 2000, the focus for Class 705 is to ensure that high quality is maintained by its examiners as this transition moves forward. Numerous quality efforts are being implemented as discussed below. Such quality efforts are resource intensive. The collective result of these efforts will be proportional to the USPTO’s ability to marshal the needed resources.

C. RESULTS TO DATE

1. Profile - An Appropriate Balance

Today thirty-eight examiners work in Class 705. This is an increase from twelve in late 1997. The total number, knowledge, and experience pool has been increased. Seventeen of the 38 examiners have advanced or multiple degrees. Of these 4 have an MBA or other business degrees, 4 have a JD degree, 4 have Ph.D. degrees, and 7 have Masters Degrees.

Every examiner in Class 705 has data processing and computer education or experience. The majority of examination in Class 705 is still centered on the data processing and computer technologies used to perform business functions. See Appendix G.

For over 100 years the USPTO has maintained quality by adapting its knowledge base continuously as business technologies have evolved. It has adjusted the mix of training and experience of its examiners. The USPTO will continue to maintain an appropriate mix of electrical engineering, computer science, and business knowledge balanced to the contents of the business data processing inventions it is asked to examine.

2. Business Industry Experience - Shifting the Knowledge Base

The patent applications of Class 705 have begun a transition to become more business function focused. Although still present in these patent applications, implementing technologies such as databases, communication systems, and circuits are becoming less prominent. However, as was previously discussed, this transition has only begun. As this transition continues the USPTO is appropriately responding by increasing examiner training and hiring, particularly by increasing the number of examiners with 3 years of business industry work experience.

Fourteen (14) patent examiners working in Class 705 have business industry work experience that pertains directly to the examination of patent applications in Class 705. Of these, ten have three or more years of work experience in various fields including Banking, Securities, Business Development, Marketing Analysis, Real Estate Analysis, Business Consulting, Management, Sales, Insurance, Business Information Systems, and Financial Analysis. This is 26% of the current Class 705 examiners. The combined business industry work experience of these 14 examiners is over 120 years.

Resources must be made available to continue to attract and retain greater numbers of these skilled experts. Without sufficient resources to continue both training and hiring, it is possible that as business data processing inventions continue to evolve the USPTO knowledge base will not keep pace with that change.

D. SCIENTIFIC & TECHNICAL INFORMATION CENTER – ELECTRONIC INFORMATION CENTER (STIC – EIC)

Patent examining in Class 705 is filled with challenges. This class contains diverse business topics (e.g. insurance and inventory systems). Prior art references can be found in many diverse sources (e.g. an Internet web site, a sales brochure, or a 120-year-old textbook). There is poor tabulation of all the available references for a particular topic (e.g. not all the insurance prior art is found in one location).

The STIC – EIC provides search and library support to help examiners meet these challenges. The professional searchers of the EIC routinely perform non-patent literature (NPL) searches requested by Class 705 examiners. The number of EIC professional searchers has expanded from two in 1995 to twelve in FY 2000. Although the EIC provides searching for all 703 examiners in Technology Center 2700, requests from the Class 705 examiners represented their largest technology specific group of search requests during FY 1998 and FY 1999. In the first half of FY 2000, this trend continued.

Among the library support functions currently being performed by the EIC are the locating of additional electronic business literature sources; the continued expansion of a conventional library of business books; and the retrieval of hard copies of pertinent NPL documents requested by examiners.

STIC is currently working on an initiative to collate examining resources into a web-based tool for Class 705 examiners. This tool will connect with databases, web sites, electronic and print literature resources on Class 705 topics.