As promised in the December Yellow Sheet, here is the full installment of the latest diary entry from our anonymous trainee…
“Week 2: The Nightmare Examiner
When I first started in the profession, I used to curse my uniquely awful luck in constantly obtaining an infuriatingly flawless examiner. (And yes, that’s right, examiner… not Examiner! I usually do hand over the capital ‘E’, however begrudgingly, but I see no need to here – it’s making me feel all giddy and rebellious.) No matter the client, or the subject matter of the application, I always seemed to think that my EPO opposite was not only my superior in law, but also my superior technically – and technical knowledge was the one attribute I was supposed to possess as a new starter! I felt overwhelmed; more than once I considered the merits of responding to an examination report with “actually, I see your point, and I’m so sorry for wasting your time…”
In the early days, it felt like whenever I opened a search report, without fail I would find a page covered in X’s. It’s said that X marks the spot – in this case, X marked the spot on my desk where I would be repeatedly banging my head for the next hour or so. The X’s would invariably also be joined by their companion phrase, that age-old examiner’s favourite: “see whole document”. I sometimes day-dreamed of writing to the EPO with some commentary on this practice; something along the lines of “Dear Sirs, In response to the comments of the Examining Division, it is submitted that Claim 1 is novel over D1 – see whole claim set. Yours Sincerely…” However, I couldn’t help but feel that most clients would fail to see the funny side of this.
The written opinion was always even more unkind. I often wondered whether it might not have been more time-efficient for the examiner to have simply written “OF COURSE NOT YOU IDIOT” – in capitals and a large font perhaps – instead of his opinion, which was instead usually a six page tour de force complete with infallible reasoning, references to obscure parts of the Guidelines, and a tone which vaguely suggested that he was offended at my attempt to squeeze such a ridiculous claim past the beady, ever-watchful eye of the EPO.
This bad luck did not, of course, really exist. Like so many things in this profession, this feeling of being hopelessly out-matched by the examiner stems from a lack of experience. I was lucky enough to visit the UKIPO on an informals trip last year, and was able to observe examiners in their natural habitat – I remember being faintly surprised to discover that everyone was very friendly. In my experience, examiners are just like us, with their own pet peeves about attorney behaviour. Having talked to trainees on both sides, it seems that the feeling of being in a bit ‘over your head’ when reading an official letter from ‘the other side’ is a shared one between trainee examiners and trainee attorneys.
However, with experience, the examiners and their reports begin to give up their secrets more readily. You soon realise that paragraphs which would previously have struck fear into your heart are just standard paragraphs, copied and pasted. You realise that, as a new starter, all references to the Guidelines are obscure, because you haven’t read many of them yet. And, most importantly, you learn that seemingly infallible reasoning may give way in the face of a reasoned argument, or may collapse under the weight of the right amendment. So, my advice to any new starters this year is this: if you feel at first like you’ve been ‘thrown in at the deep end’ when you read communications from an examiner, the solution is easy: just keep swimming! (At least, that’s what I’ve been doing – I haven’t found dry land yet, but the swimming does at least get easier…)”