By Alex Rozas
The purpose of this article is to lift the veil on why Examiners do and say what they do and say, particularly for new practitioners. Special Thanks to Hughie Kellner for proposing this topic, and Michael Brandt and John Conklin for their contributions.
“We do the best we can with the time we have.” [1]. Like many Patent Prosecutors, Examiners face substantial in-house pressure to move work products quickly. “Examiners’ performance is mostly judged on how much work they get out the door…[T]here is no reward for going above the minimum standard in quality, but there are rewards for getting more work products out the door.” [2].
What are an Examiner’s Work Incentives? Productivity. And, to a lesser extent, docket management. At optimal productivity and docket management, Examiners receive an award of 11.75% of their base salary. [3], [4]. Drafting an application that frustrates an Examiner’s ability to move through it quickly is a personal financial blow to an Examiner.
Productivity increases with time-efficient examination of applications, as measured by ‘counts.’ There’s a detailed scheme of count awards per action—but, in the end, the first round of prosecution’s actions will award 2.0 counts, actions of a first RCE award 1.75 counts, and actions of subsequent RCEs award 1.5 counts. [3].
Regardless of round, the greatest windfall of counts for Examiners is awarded with the first action on the merits. This is when Applicant is at liberty to ask the most of the Examiner, time-wise. [3]. However, problems are often laid at this stage if a confusing application leads the Examiner down the wrong path. Applicant will spend the rest of prosecution trying to reorient the Examiner. And worse, at this stage, the Examiner has 1) a solidifying idea of the invention with broad discretion to ignore Applicant’s reorientation, and 2) few counts left in the round to justify the time and energy which Applicant is asking of the Examiner. The Examiner will be ready to move on to an RCE. [1], [3].
A common scenario is one wherein the Examiner uses a different plain meaning for claim terms than the Applicant. If the claim language at issue cannot be easily modified, this may be a good reason for an immediate Examiner interview. [5].
But what motivates the Examiner to allow or reject an Application? Individual discretion, within reason. Every prior Examiner spoken with or writing on the subject struggled to answer the question, “what motivates Examiners?” I.e., what informs how strict or how understanding they are with an application? Some say “integrity,” others “trust or lack thereof [in the Applicant],” some “pride in my work quality,” and one a more blunt “sometimes the patience I had left that day.” [1], [2].
More important than these scattered answers, perhaps, were the common threads: long pauses and disclaimers of ‘I can only speak toward my own.’ Every Examiner is different, and Primary Examiners enjoy broad discretion to exercise their own individual judgement. The Applicant should respect this during prosecution. While appeals, formal and informal, are available, and federal courts backstop decisions rendered by the PTO, the majority of the time, Examiner judgement will control what is ultimately patented. An Applicant has limited leverage to force an Examiner’s hand. [1], [2].
Exception: where an Applicant has a strong case and an unreasonable Examiner, requesting the Primary Examiner or Supervisory Patent Examiner (SPE) (or Technology Center Director) above the present Examiner to offer a second opinion can be a powerful gambit. A friendly second opinion will persuade even an entrenched Examiner, while an unfriendly second opinion leaves Applicant more or less where they began. [2].
Fear of error or appeal generally does not motivate Examiners. I have yet to hear or read an Examiner express concern about their appraisal’s Quality Element [their “accuracy” rating]. The standard of review for Quality is a lenient “clear error” standard, and there are opportunities to salvage dings on Quality—especially where an Examiner’s Production is high. [3], [6]. An example new practitioners would do well to note: there is no practical consequence for an Examiner who is overturned on appeal! When overturned on appeal, Examiner “errors” are ordinarily considered a reasonable difference of discretionary judgement. Therefore, expressing intent to appeal rarely persuades Examiners. [1], [2], [3], [7].
Exception: Examiners are motivated to avoid 2nd Nonfinal Office Actions or a Final Reopened. These are typically the result of a mistake by the Examiner, and they negatively impact the Examiner’s SPE, unless Examiner and Applicant reach an agreement that moves the application to allowance without another Office Action. [8], [9].
Finally, check your Examiner’s level of experience before responding to your first Office Action. Examiners with 15+ years’ experience have usually been in their technological areas for a long time. They often feel (not without reason) that they are uniquely aware of the state of their art. They are likely, during prosecution, to focus on your claim language, compared to what they just “know” the state of the art to be. Examiners with 0-5 years of experience tend to be more responsive to exact specification wordings and technical arguments raised in the Office Actions and Responses. However, expect Junior Examiners to be inflexible with respect to any instruction they receive from their Primary Examiner (particularly on § 101 issues). Junior Examiners are recognizable by a second signatory Examiner on their Office Actions. [2]. Note that Examiners are rarely receptive to pure legal arguments outside of clear MPEP rule applications. If a strong legal argument exists, raise it late in the Response and keep it short to preserve it for appeal without frustrating the Examiner. [5].
In closing, bear in mind that Examiners are just people who don’t want to do a bad job while moving quickly through a complicated document. They’re technically trained in their fields and usually not legal scholars. They may have more than a little pride in their understanding of their technical corners of the world. Offer them a positive, technical story of the invention—particularly as it relates to avoiding the troublesome prior art. Most will ultimately respond.
Resources
[1] See generally, USPTO Examiner Forums and Reddit Threads. They’re uniquely accessible and illuminating starting points in understanding PTO Examiner feelings, frustrations, and motivations.
[2] Brian Downing, From Agent to Examiner and Back Again: Practical Lessons Learned from Inside the USPTO, IPWatchdog (January 2021), From Agent to Examiner and Back Again: Practical Lessons Learned from Inside the USPTO (ipwatchdog.com).
[3] Patent Examiner Performance Appraisal Plan (PAP) Guidelines, USPTO (April, 2012) (note, this is the most recent PAP released to the public).
[4] Why Patents in September Are a Bad Thing, BlueIronIP (March 2021), Why patents in September are a bad thing - BlueIron IP.
[5] Daniel Hanson, Conventional Patent Wisdom Revisited, IPWatchdog (July 2020), Conventional Patent Wisdom Revisited (ipwatchdog.com).
[6] Julie Burke, Does the USPTO’s Roadmap to Improved Patent Quality Lead to Lake Wobegon?, IPWatchdog (July, 2021) (current PAP synopsis), Does the USPTO’s Roadmap to Improved Patent Quality Lead to Lake Wobegon? (ipwatchdog.com).
[7] Andrew Hirshfeld (Witness), UPSTO Responses to Questions for the Record, US Senate Committee on the Judiciary Subcommittee on IP (October 2019), Hirshfeld Responses to QFRs.pdf (senate.gov).
[8] (Excellent Beginner’s Guide to Examiner Interviews) Pezzner, Benjamin; Patent Prosecution from Examiner’s Perspective; Morgan Lewis (January 2019), *Microsoft PowerPoint - 088888__101891208v1_Final PPT - Silicon Valley First Cup of Coffee -Patent Prosecution from an Examiner_s Perspective - BHP EJP 01.31.19 (2) (002) [Read-Only] (morganlewis.com).
[9] Garett Hall, How to Win Friends and Influence Patent Examiners, IP Master Class (January 2018), Patent-Examiner-Count-System-IP-Master-Class.pdf (slwip.com).
Alan Marco, USPTO Patent Prosecution and Examiner Performance Appraisal, Office of the Chief Economist (Economic Working Paper Series, June 2017) (updated PAP synopsis).
