lege of Law and is also a Member of the Bar. He taught school for nine years preceeding his entry into the Patent Office on July 2, 1906. He served in Divs. 35, 38 and 4, and was made Principal Examiner of Div. 12 in Aug. 1919.

UNIFORMITY OF PROCEDURE IN THE
PATENT OFFICE.

WM. A. KINNAN,

First Assistant Commissioner.

Uniformity of procedure in this Office is something devoutly to be wished and the lack of it is responsible for much needless controversy, waste of energy, added work, long delay and many heart burnings. That, on the same state of facts, one examiner would grant only a very restricted patent and another a broader patent, or one would readily grant a limited patent while another would grant none at all, is inevitable, with fifty-three principal examiners, yet it is none the less unfortunate and is an evil to be minimized as greatly as possible.

It is my firm belief that the founders of our patent system and its organizers under the present statutes contemplated every debatable question in connection with the grant or denial of a patent should be passed upon by a principal examiner; that no such procedure was ever had in view as an assistant examiner "running his own desk", as it is often expressed, to the exclusion of consultation with his chief upon all holdings likely to be traversed by inventors or their counsel, and this is true even if the assistant has had a maximum of experience and has amply demonstrated his ability to himself fill the position of principal examiner. This was almost the universal practice a generation ago and is substantially the procedure in some examining divisions today. Where such plan is no longer followed this evil of different viewpoints as to patentability and procedure exists in one and the same division. The result is that

patent claims are finally adjudicated by hundreds of different examiners-instead of fifty-three-widely dif fering in experience, ability and temperament. Only as appeals are taken are any of these decisions harmonized and standardized by the appellate tribunals. This involves a deal of needless, time-consuming argument and reconsideration and many unnecessary appeals and adds much to the labors of the Office.

The conditions which brought about this last noted situation have been compelling, if not wholly unavoidable. In the more recent years, the great number of applications pending before each examining division, the increase in the number of assistants supervised by each division head, as well as the frequent resignations of experienced assistants and the consequent influx of new men necessitating the devotion of the bulk of the principal examiners time to training these new recruits, have made it well nigh impossible for the division chief to consult with all of his assistants and give to each the wealth of his ripe judgment upon all controverted matters. In the gigantic struggle to keep the great volume of work moving and prevent being utterly swamped with an accumulation of cases, the hard pressed principal examiner has been forced to trust his assistants, in proportion as he has found them capable and trustworthy, to seek his judgment only when they themselves take the initiative. There has, largely in consequence of these conditions, become existent a sort of feeling or sentiment among the assistants, that they should be permitted, after an all too short experience and training, to "go it alone" or act on their own cases, and that it is humiliating to have to report their cases to the principal examiner. Some assistants have expressed the view that by being required to confer with their chiefs upon all debatable questions they were not being granted opportunity to develop or learn to exercise independent judgment. I have little patience with such a viewpoint. Aside from the fact that such assistants subordinate the great purpose for which they are here to their own ag

grandizement, they are wrong in their conclusions. Their deductions are wholly unwarranted. Every principal examiner relies heavily upon the judgment of his experienced assistant, very often follows or accepts it, but the best opinion, not of either alone but of both, after full consultation upon the matter in controversy, is what should be given, since it often determines property rights of immense value. The value of the assistant's views is very great. In giving his chief his best judgment and in explaining and defending it and submitting it to the keen analysis of the principal examiner, the latter renders a better opinion and there is also ample opportunity for an assistant to grow and to develop. He does grow in knowledge more rapidly and more quickly becomes efficient, his judgment becomes better by reason of such conferences, and a more nearly just adjudication results. The inventor's interests are paramount to the preferences of an assistant examiner and the inventor is entitled to the best judgment both examiner and assistant can give.

The Committee of ten experienced patent lawyers, with former Commissioner Ewing as its Chairman, which was appointed by the Secretary of the Interior to make a survey of the Patent Office, has recommended that seven assistants be regarded as the maximum number to be under a single principal examiner. I fully agree with this view and if this recommendation becomes possible of being carried out, I would urge that the old practice of submitting all debatable questions to the principal examiner be restored throughout the entire corps.

By reason of the very large number of new assistant examiners constantly being added to the corps, and because many principal examiners have little time to train the new men, there is under consideration the adoption of a plan whereby all new assistants will be first assigned to a division having light, simple classes of cases, in charge of a competent principal examiner and several experienced and able associate examiners, whereby a year or so of initial training and instruction accompanied

by actual application of the principles to the work may be carried on to the end that all these new members of the corps may get a proper and uniform understanding of our procedure before being permanently assigned where their particular education best fits them.

There is much the examiners can do now, however, in keeping in touch with all the more important controversies in their divisions, without unduly retarding the output. A system of review of all proposed actions can be installed whereby, so fast and in proportion as the assistants become reasonably experienced and trustworthy, formal and other matters of minor importance, so long as they are not in controversy need not be reviewed by the principal examiner. An assistant should know his case, understand the art he has found and, ordinarily, have decided what he thinks should be done before submitting the case to his principal. It is a poor assistant that has no preconceived view as to what action should be taken when he submits a case. If an assistant of some experience and proved trustworthiness states certain claims are fully anticipated by references, the principal examiner ordinarily need not consider this matter at all until a controversy regarding it arises. If there is something lacking in the reference and the assistant proposes to hold "no invention" over the reference or that two references may be combined, the examiner should review this specific point. Having approved it, the assistant may be left to apply it to the case. If the assistant finds no reference for a group of claims the examiner should note the broadest one, which the assistant should have indicated, and consider whether any search elsewhere seems advisable. It is a broad claim that gives trouble. If the examiner can add nothing to what the assistant has found, he need not review any of the other claims of that group. Questions of division and of interference should always be reviewed by the division chief.

The authority to determine when an interference exists rests with the primary examiner. This authority,

which was for some years vested in the law examiner, was restored to the primary examiner over three years ago. The latter was specifically directed to personally review every proposed declaration of an interference. The number of interferences dissolved on motion indicates some principal examiners are not giving this phase of their work the necessary attention. The records of the docket clerk showing the interferences declared by each principal examiner have been carefully studied to determine the number terminated by dissolution. The improper declaration of an interference is an injustice to the parties involved, forces them into costly procedure, and results in a very large amount of useless, time-consuming labor. No principal examiner should think of allowing any assistant, no matter how well experienced, to decide a question of interference. I do not belittle the value of the assistant's judgment. In a given case it may be greater than that of his chief, but it is not so valuable as the judgment of both. The assistant and the examiner should both go into the matter carefully and fully. It is noted Rule 94 does not provide for steps being taken looking to the declaration of an interference unless and until the parties have already presented claims which are in conflict. The suggestion to an applicant of a claim for features shown but never claimed by him is unwarranted by any procedure in force in this Office.

If the chief is familiar with the patents in his own division and, if he is a good examiner and is energetic he will be before he has been in charge of his division for very long, if he uses judgment in determining the ability of his assistants, in instructing them, and holds himself always in readiness to help them when they ask his aid, he need not take, on an average, more than two hours per week in reviewing the work of an assistant of some experience and fair mentality. The saving in the time. consumed in needless controversies and unnecessary actions will far outweigh this loss of time spent in review. The actions will be better and fewer of them will be