Dealing with Examiners can sometimes be frustrating. Each Examiner has his or her own personality and methods. Sometimes, it is just difficult to see where the Examiner is coming from. Why did they send out the strange one paragraph Office Action? Why did they say they would not enter the amendment without an RCE?
Of course, different Examiners have all kinds of different motivations, from a desire to serve the public to a desire to go home for the day (if they are not already there) to a dislike for patent attorneys. But one motivation is the same for all Examiners- the desire to meet the requirements imposed on them by the Patent Office (PTO) so that they can keep their jobs and make their bonuses.
If you understand the incentives provided to Examiners by the PTO, you are well on your way to understanding the reasons behind many of the Examiner’s actions. And if you understand why the Examiners do what they do, you can also predict what they will do and what you can do to get the Examiner to do what you want- allow your application.
The USPTO Performance System
Unlike the vast majority of employees, Patent Examiners are judged primarily on a quantitative basis. Each Examiner must examine a certain number of cases on a biweekly, quarterly, and yearly basis. Failure to meet this production quota results in termination! Exceeding the requirements results in escalating bonuses. Thus, the Examiners have powerful incentives to meet and exceed these production quotas.
How exactly does the PTO determine how many cases have been examined? The Office uses the “Balanced Disposal System.” An Examiner needs a certain number of Balanced Disposals each biweek, depending on their pay grade and art unit. Each Balanced Disposal consists of one new count and one disposal count. New counts are awarded only for first office actions on the merits. Disposal counts are awarded only if the application is abandoned or allowed, or if the application is appealed and the Examiner writes an Examiner’s Answer in response to the appeal brief.
Counts are not awarded for anything else. An Examiner gets absolutely no credit towards his or her production quota for searching for relevant prior art, for writing a second or subsequent office action on the merits, for conducting an interview with the Applicant, for reopening a case in appeal, or for an advisory action.
Obviously, the Examiners are highly motivated to seek out the best ways to obtain the points necessary to meet their production quotas in the least possible time. In the next post, I will explore the ways in which this incentive system affects the examination of your application.
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When I worked at the PTO years ago, it was not uncommon for an Examinator to be willing to allow a case but to made to persist in an obtuse rejection by a supervisor. Also, in addition to requiring production, all levels of PTO management would impose policies that made it difficult to allow cases (usually under the guise of “quality.”) So it’s not always the Examinator’s decision when your client gets a boneheaded rejection.
That is a good point. It can be difficult to tell whether an Examiner is deliberately doing something or is being forced to do it by a primary or supervisor. The production system is certainly not the only cause of poor examination. However, Examiners will often try to clue you in when they are having trouble with the higher-ups, telling you they have to take your proposed amendment to their primary/SPE or telling you what their primary/SPE had to say about something.
I’ve even had examiners tell me straight out that their SPE told them they would never let them allow the case. Obviously, at that point an appeal is in order. Controlling the timing of your interviews and responses may be less useful under those circumstances, since the Examiner is not controlling the examination. However, other tactics like interviews and appeals are invaluable as they may let you get directly to the supervisor.