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[ward00]

I curious to hear opinions on whether a Patent Examiner should be able to work a 2nd job as a private Patent Searcher with the 2nd job activities limited only to performing searches ONLY (i.e. no written opinions, summaries  etc would be given).

What are some of your reasons why you think would be ok or not ok.

I'll start, after the Patent Reform Act is in full effect, since patent examiners will examine only patents that have published (i.e. in the public domain) there should be no conflicts of interest in perfoming searches for private clients, whether they be in the same field of the examiner or not.

[mk1023]

I pulled up a webpage titled "Top 10 Ethics Rules for USPTO Employees". Rule number 5 is: Do not engage in outside activities with non-Federal entities that have matters before your office (unless you can easily disqualify yourself from working on such matters). I would say at minimum you should not be doing searches in the area you examine or any area where the more common assignees in your area also file frequently. It'd be interesting to see what OGC would say about an examiner working in TC2100 yet wanting to be a public searcher for biomedical device apps. Probably would still find a way to stop them from doing it.

Also see http://www.uspto.gov/web/offices/pac/mpep/documents/1700_1701.htm

[NJ Patent1]

To quote former Pres. Clinton, “I feel your pain”.  A marriage or new child contemplated and you wake-up thinking “holy crap”! How am I going to afford this on an Examiner’s salary (depending on grade)? 

Kudos to MK for finding that webpage.  Are applications not assigned to an art unit before search?  Why if any Examiner from any art unit can do it right?  Would you (could you ethically - in broadest sense) search far outside the subject matter of your TC and your own technical competence?  The subject matter of the putative invention to be applied for, or issued patent in reexam or litigation, that you might search, could wind-up in your office (or TC) or even on your desk - for examination or reexamination.  If it landed on your desk, how would you easily disqualify yourself?  Ooops!  I already searched this and found nothing negating patentability, ergo claim allowed on first action or patentability confirmed (or vice versa).

I hate to take bread out of your mouth, or that of your spouse / children.  But IMO, on totality of circumstances, the idea flunks the “smell test”, if for no other reason than that - in the ideal world - our federal officials, especially non-elected federal officials (that’s you), should be - or at least give appearances of being - “squeaky clean”, objective, “by the book”. etc.  A legal fiction I know.  But would you really want to be the poster child for reformists in Congress or the press stamping out “corruption in our oversized and bloated federal government”.  But hey, if you don’t get caught … ?  Every issue of the New York Law Journal has at least one announcement of a suspension or disbarment of an attorney.  You may not be an attorney, but how would you explain “reason for leaving last job” to a potential new employer? 

Final thought.  If the idea gives you pause (wence UR post) , there is a reason for it. 

[plex]

It's not even a question.  You would get fired when they found out you were doing it.  Patent examining is a quasi-judicial job and what you are talking about is a very obvious conflict of interest.  They even explicitly tell you not to do this exact thing on the first day.

[ward00]

Examiners search only published applications (at least they will in a couple of months) and my thesis was predicated on the assuption that I would take on work not knowing a clients interest in the search .  I'm not seeing they way how the public knowledge used in one job could construed as being in conflict with the public knowledge used in the other job.

I'm sure a search firm would not want to take on the what if's, but as a sole proprietorship its something I am intersted in looking into further.

If anyones else want to chime in - go for it.

[Itoen]

It is clearly improper.  The bottom line is that you'll be getting paid by outside clients whose applications, or whose competitor's applications, you'll potentially examine.  The possibility of impropriety is way too high.  Holding a government position while also being paid by an outside client raises questions as to whether a client is throwing you business or paying you above market rates in order to get their own applications allowed, or even if you recused yourself from the client's applications, whether they were influencing you to reject competitor's applications.  This is clearly improper.

[plex]

Since we posted at the same time, I'll repeat it, doing this sort of thing would result in immediately getting fired.  Also, to poke another hole in your logic, you are forgetting 102(e) entirely, which is based on filing date, NOT publication date.  So the moment it is in the USPTO's hands and soon after perfected, it is prior art.  At least, until first to file kicks in next year, an applicant can still attempt to prove an earlier perfection date, but that actually makes your hypo even weaker.

[ward00]

Good point about being paid by a client I know the name of - but my intention would be to have a wall and me and the client - the only information I would accept is scope of prior art needed.

As to being fired immediately - also a good point

All your comments are useful

Still thinking about the what ifs

[Vanilla Ice]

If you're just looking for a side job, why not try tutoring? Just post an ad on craigslist, and voila, its better money than you might think, perhaps more than you would make using this rediculous obvious unethical scheme that will eventually get you fired. Or just work overtime if you are a GS-9 and past the probationary period. There is more than one way to skin a cat. Just my two cents, thats all.

[NJ Patent1]

Ward:  All of the negative comments - including mine - not withstanding; this is something you obviously REALLY want to do to pick-up some coin.  Then just do it.  Why so much discussion?  For example, some attorneys "comingle funds" (a different ethical violation) all the time and get away with it.  Of course many get caught (at least in NJ and NY) and get disbarred. No big deal, there are plenty of widows out there to swindle - easy pickn's. 

 You are only risking your rep in the field and a sweet gig with the feds. (Hello! do U read unemployment stats?  Guess not) The bucks are obviously more important to you than blatant ethical considereations.  So for heaven's sake, as Nike say, JUST DO IT!  But please, no tears if you get busted and f-up UR career.  Hey, as Plunket of Tamany Hall said. "Corruption?  Nah, I just seen my opportunities and I took 'em".  If caught, you can always hang drywall.   IMO, every post here has given "thumbs down".  But you can't resist the $$$ can you?  Undersatndable.  But as I best read the posts, nobody here has given you a shoulder to lean on (nor IMO should they) if you get busted. 

To quote Dirty Harry; "do you fell lucky punk?  Well do 'ya?"  If you fell lucky just goddamm do it! Man-up, stop this hand wringing, and take UR chances.  We all ride our own horse.  Go grab for that brass ring.  What U afraid of?  The posts not withstanding, you have all the answers why U can't be  booted-out of USPTO for such activity.  Trust UR superior intellect and show OED - or whatever department - why they, as ignorant fools, don't know what you have "discovered" in ethical rules.   Bottom line: IMO - and apparently in that of most other posters - UR idea simply flunks the smell test - the best ethical test.  That tell U sumfin'? Here endeth my last post in this thread.  If you do it, I promise not to rat - but, in return, you promise to let me "wet my beak" a little for my silence, Right?   

[ward00]

Why you ask so much - to make cover all the angles - still not convinced if I do this on my own time and with a firewall between me and the client and no legal opinion taken or given, that it can't be done.  In any case - conversation is closed as it seems some are uncomfortable with exploring the edges. 

[MYK]

Why you ask so much - to make cover all the angles - still not convinced if I do this on my own time and with a firewall between me and the client and no legal opinion taken or given, that it can't be done.  In any case - conversation is closed as it seems some are uncomfortable with exploring the edges.

I'm not seeing anyone who is "uncomfortable", I'm seeing people who are telling you flat-out that it is prohibited and will result in your being fired.  If you don't want to listen, fine, it's your career that will be damaged.

I'm curious as to whether OED would allow someone to remain registered as a patent agent/attorney after being fired from the USPTO for such a violation;  it might be career-ending, not merely job-ending.

[virus_guy]

I'm wondering why the OP seems adamant about doing searches as a side job. Personally, I didn't really like searching prior art as an examiner and I definitely don't like doing it on the outside (nowhere near PTO) as an agent, mainly because the resources from the outside cost $$$ and the tools available aren't as great, IMO. You'd be searching at work and then you'd go home and do more searching? Or would you be doing your side job at the public search facility or *gasp* in your office? Smells a bit funny. I think everyone gave some very good and cogent reasons not to pursue this path that's worth heeding.

[smrunner99]

I say go for it, especially if you are in the chem arts unit only so it opens another position up for myself   

[NJ Patent1]

The OP is clearly convinced of the rectitude of his position on the matter and will not be disuaded.  Legal minds can differ.  All I (we all?) can do is to wish him all the  best.