Changes coming to USPTO--Part V: new examiner count system
by Robert J. Sayre
Earlier this week, USPTO Director David Kappos unveiled a proposed new count system for measuring examiner production. This news may sound like esoteric trivia if you are not a patent practitioner; though, in fact, it represents a very important development for the improvement and healthy functioning of the US patent system.
Allow me to first step back and provide some context. First-time patent applicants are often surprised to when I tell them that we can expect a likely rejection of their patent application when the examiner issues a first Office Action. The reasons for this phenomenon are addressed below.
First, examiners at the United States Patent and Trademark Office are given very little time to issue Actions on what are often very complex and detailed patent applications. As technology grows more complex, so do many patent applications; and, therefore, more time should be allotted for examination.
Additionally, Examiner production at the USPTO is measured in "counts." Examiners have historically received one count for a first Action on the merits and one count for an allowance or abandonment. Accordingly, if the examiner issues a first-Action allowance, the examiner receives one count. If, however, the examiner issues a first-Action rejection, allows the applicant to respond, and then allows the application, the examiner receives two counts.
Please do not misinterpret me, however. I am not suggesting that examiners are by-and-large unscrupulous or lack integrity--not at all. I do occasionally receive first-Action allowances even where issuing that allowance may run contrary to the examiner's self interest in terms of receiving counts, and I find that most of the examiners at the USPTO with whom I interact take their jobs very seriously and have high integrity. Nevertheless, I think most psychologists/sociologists will tell you that this incentive system is likely to skew results, at least in close cases, no matter how fair-minded the participants may attempt to be.
Director Kappos earlier pledged to dramatically change the count system to provide better, fairer incentives for expeditiously reaching determinations of patentability. Kappos previously referred to "disfunctional behavior" in the examination of US patent applications, and the USPTO presentation introducing this proposed new count system cites as an expected result of these changes a reduction of "examiner reluctance to allow patent applications" (slide 3 of the above-linked presentation). Another expected benefit of these changes is to "increase examiner morale leading to reduced attrition" (slide 5--high examiner turnover is currently one of the biggest problems at the USPTO).
Although this initial proposal may ultimately be subject to revision, I give Kappos and his task force high marks in crafting a proposal that appears likely to noticeably advance the goals of promoting efficiency and fairness in patent examination; and I applaud their transparency and openness in presenting this proposal to the public, which is a marked change from the practices of the previous administration.
Important elements of the proposed new count system include the following (with my comments in parentheses):
- allotting the examiner more time to issue a First Action on the Merits (if you value efficient, cost-effective patent prosecution, moving toward a more in-depth, carefully considered evaluation of patentability issues right from the start is welcome news),
- crediting examiners with time to conduct examiner-initiated interviews (I have already posted my views as to how interviews with patent examiners can dramatically advance the resolution of issues during examination; if examiners are likewise encouraged to reach out to attorneys when they confront an issue that may more readily be resolved via an interview, these advantages and efficiencies can be further increased and expanded beyond situations where the attorney initiates the interview), and
- reducing the credit that examiners receive for later Actions in drawn-out examinations. including reduced credit for the filing of Requests for Continued Examination (again good news for applicants wishing for a more expeditious resolution of patentability issues).
The USPTO presentation (slide 6) also includes a couple of tables (reproduced below) comparing the current count system with the proposed new examiner count system:
Current count system:
Proposed new count system:
The columns in the above tables represent (a) First Action on the Merits (FAOM), (b) Final Action, and (c) Allowance/Abandonment of the application for an original application and for further examination after filing a first and second Request for Continued Examination (RCE).
Further still, the presentation (slide 19) suggests that examiners would also face reduced risks of penalty (oral warnings) if an indication of patentability is found to be in error. This proposal also is good news for applicants, as a fear of reprimand on behalf of examiners if a questionable case is issued is believed to be a cause for the drastic drop in the patent allowance rate at the USPTO.
I expect these proposals will be subject to at least minor tweaks as interested stakeholders (including the examining corps) offer their input. Meanwhile, recognizing that a lot of the traffic to this blog comes from the USPTO (though I never know anything more specific than the source domain--I do not know which examiners may visit this site), I welcome any comments from examiners as to how they view this proposed new count system.
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