NotePD Loader
Ideas Post

Steve Alvest


Patent Examination Terminology

I'm a patent examiner by profession. Here are some terminology that patent examiners and patent attorneys should be familiar with, but are probably nonsense jargon to most people.

Patent Examination Terminology

    1. PHOSITA

    Person having ordinary skill in the art. It's a theoretical person who represents the average Joe working in a certain field.

    2. MPEP

    Manual of Patent Examining Procedure. It's thousands of pages and the bible for everything a patent examiner could possibly want to know about doing the job.

    3. Alice

    Refers to Alice Corp. v. CLS Bank International, a 2014 Supreme Court case that effectively killed business method and software patents in the United States. These days, I feel like 20% of my job is arguing with attorneys about this.

    4. Count

    A work unit for patent examiners. It's used to calculate production percentages, which are used to calculate whether I should get a bonus, a promotion, or get fired. Roughly, I get 1 count for every 20-page report I write on the patentability of an invention. But it's a lot more complicated than that (I can also get 0.25, 0.5, 0.75, or 1.25 counts for any given case).

    5. FAOM

    First action on the merits. It's basically my first crack at determining the patentability of an invention. I read the disclosure, look at the drawings, see what's claimed, do a search to see if it has been done before, and write a report on what I've found. They're usually about 10-20 pages in length, though the longest one I ever wrote was 76 pages (and I still only received 1 count for it, see #4 above).

    6. Hotelling

    I always thought this was a funny term. It just means "working full time from home"

    7. AIA (FITF)

    The Leahy–Smith America Invents Act (First Inventor to File). Part of President Obama's legacy. The biggest implication is that it switched us from a "first to invent" system to a "first to file" system like they use in Europe.

    8. PCT

    Patent Cooperation Treaty. There's no such thing as an "international patent." The closest we have is the PCT system where patent offices around the world share information with each other.

    9. SPE

    Supervisory Patent Examiner. My boss. An interesting thing about the US Patent Office is that the hierarchy is pretty flat. President Biden is only 5 levels higher than me.

    10. OACS, EAST, eDAN, red folders, pink folders, Count Monday...

    Terminology that are no longer used at the US Patent Office, but older examiners like me can drop in conversations to show how long we've been working at the USPTO.

0 Like.0 Comment
justintsanand 2 more liked this
Comments (0)

No comments.