Timing

One way that knowledge of the performance system can be used advantageously by an applicant is by timing interviews and amendments to maximize the chances of allowance.  An Examiner’s performance is critiqued on a quarterly and yearly basis.  The government’s fiscal year begins October 1, which means that September 30 is the last day of each annual performance review period.  Other quarters end at the end of December, March, and June.  These times at the end of fiscal quarters, and particularly at the end of fiscal years, are the most hectic times of the year for Examiners.

If you try to schedule an interview or get an Examiner to act on a case in the last few weeks before the end of a fiscal quarter (and especially before the end of the fiscal year), an Examiner will often be unable to accomodate you.  They will simply be too busy trying to get a few more actions out to meet their goal for the quarter and/or year.

But, if you time your requests for a little before that time, perhaps a month or so before the end of a fiscal year, Examiners are often unusually receptive. At that time, every Examiner is eyeing their deadline and thinking about how they are going to get enough counts to keep their job or hit their next bonus.

One of the easiest ways for the Examiner to pick up another few counts is to allow a few cases.  Allowing a case takes maybe an hour for an Examiner to fill out a few forms and follow the necessary procedures.  It is much easier than writing a new first action on the merits or an Examiner’s Answer.

Therefore, an applicant will often meet with success in close cases when scheduling an interview for about a month before the end of the fiscal year (or the end of a fiscal quarter, if that is not possible) and trying to reach an agreement with the Examiner on an amendment that would result in allowance, with or without an RCE.

Appeals

Another strategy for dealing with Examiners in light of their incentives is to appeal rather liberally.  Appeals, although becoming more common, are still extremely rare.  A lawyer I know at a big firm commented that his firm almost never appeals for fear that an application would be rejected by the Board, preferring to file RCEs and continuation applications as necessary.  This leads to some boldness in the Examining corps, in my opinion.

Filing an appeal has several positive effects.  First, it tells the Examiner that you are not going to file RCEs over and over again no matter what he or she does.  An appeal signals that the RCE gravy train is about to come to an end.  They now know that the case is not going to get disposed unless it is allowed or it is seen by the Board, where the Examiner could potentially be embarassed and reversed.

Second, Examiners do not like appeals.  They do not like holding an appeal conference with their supervisor and, worse, a third party, who review the Examiner’s work closely.  They do not like writing Examiner’s Answers. They do not like being forced after an appeal conference to reopen prosecution and change their rejection without getting a count for it.  And they do not like being reversed by the Board.

Examiners do not expect to be appealed and are often suprised when it happens.  It puts them in another frame of mind, often a frame of mind in which they take the case more seriously and really think about whether there might be something in the application they could allow.

For those reasons, whenever an Examiner is uncooperative and is making what appears to be a clear error, I appeal.

Interviews

Another tool that can help get an application allowed even when an Examiner appears to be stringing an application along for RCEs is the interview.  I am a big believer in interviews.  It is too easy, even when you have good intentions, to just push papers past one another without really figuring out what the other person is saying when all communication is conducted in writing.  When dealing with a “bad” Examiner, not having to explain themselves to you or face you makes it much easier for them to do things that are really not proper.

Speaking with the Examiner gives you a chance to make a human connection and break through the bureaucracy.  Sometimes when I receive a really bad Office Action and call up the Examiner for an explanation (very politely), the Examiner will be embarrassed and apologize and offer to do something to clarify the rejection for the record. Most Examiners are not bad people, they are just humans working within the constraints of the Patent Office.  It is all too easy to fall into the trap of taking shortcuts to maximize the number of counts you get for a day’s work when you never have to see the people hurt by your actions and when you get rewarded with large bonuses for doing this.

Meeting with Examiners is therefore a good way to break through this cycle.  When I was prosecuting patent applications full time, I was on the phone with an Examiner almost every single day.  Often I would speak with several Examiners in one day.  In particularly difficult cases, I will go to the Patent Office and speak to the Examiner in person.  I have found that things get done in interviews.  Interviews are the best way to agree on an amendment (if necessary)  and achieve allowance.  If I can get the Examiner to suggest an amendment, that often seals the deal. Examiners often find it harder to reject their own wording than to reject yours!

It is very difficult for an Examiner to refuse to cooperate to your face, so usually you can get an Examiner to work with you in an interview to find something patentable.  And that is the way it should be.  Patent examination is not supposed to be adversarial.  Patent Examiners are not supposed to search for reasons to reject your application.  Rather, they are supposed to work with you to figure out what is patentable and to allow it.  Fortunately, I still find a lot of Examiners who know this too.  But for those that may be forgetting… the strategies above have been very helpful to me, and I hope they will be helpful for others as well.

In part 2, I explore the effect of the Examiners’ performance system on the patent prosecution process.  In theory, this may seem like a workable system in which the Examiners are encouraged to make the best case possible as quickly as possible so that they can get the case either allowed or abandoned and get their Balanced Disposal to meet their production quota.  In practice, the system frequently turns into an RCE-churning machine.

An RCE is a Request for Continued Examination.  After an Examiner has sent a Final Rejection, the applicant has a choice to make, if the Examiner cannot be persuaded to allow the case.  Either the case must be appealed to the Board of Patent Appeals and Interferences (BPAI), or an RCE must be filed, along with some change to the application.  An RCE, submitted with a rather large fee, requires the Examiner to consider the application anew and issue a new Office Action.  Essentially, it removes the finality of the Examiner’s rejection.

The trick is that an RCE is treated in the PTO as if the application has been abandoned and then refiled.  So an RCE counts as a disposal count and the Examiner’s Office Action in reply to the RCE is a new count- even though the Examiner does not need to conduct a whole new prior art search.  If the Examiner allows the case after an RCE, even better.  The Examiner gets a disposal count for the RCE and a new count and disposal count- an entire Balanced Disposal- for allowing the case.

It is much easier for an Examiner to meet the production quota by churning RCEs than by examining new applications, where lengthy prior art searches are required to get a single new count. Thus, the Examiner has a tremendous incentive to encourage RCEs.

Requiring RCEs After a Final Rejection

There are several things that Examiners can do to encourage RCEs. The easiest and most common thing for them to do is to refuse to enter an amendment after a final rejection without an RCE.  An Examiner is only supposed to require an RCE in that situation if the amendment made by the applicant would require further searching of the prior art.  However, that is a pretty subjective standard and it is easy enough for an Examiner to say a further search is required regardless of how minor the proposed amendment is.

Two extra counts are a big deal for an Examiner, which makes this an easy decision for most of them. Although this sometimes adds needless expense to an application, it is usually not a big deal and the applicant is generally best served by going along with it.

Poor Examination

A bigger problem is that this focus on RCEs can lead to poor examination throughout prosecution.  I have worked with many Examiners and there are a lot of good ones that try hard not to fall into this trap, but most Examiners are affected to some extent.  The Examiners that are really affected can be a nightmare for an application, leading to great unnecessary delay and expense.

In the worst case, an Examiner performs a minimal initial search- just enough to find some reason to reject the application- and takes the new count.  Often this type of rejection is not very strong.  The Examiner then tries to get to a final rejection as soon as possible.  The Examiner may do this by repeating the initial rejection and making it final, even where the applicant argues against the rejection persuasively.  Or, the Examiner may improperly enter a new rejection and make it final instead of non-final, knowing that it is very difficult to successfully petition such an error due to time constraints.

Now, the applicant is forced to decide whether to appeal or file an RCE with an amendment.  Since the rejection is weak, an applicant often will choose to make a minor amendment with an RCE in order to overcome the rejection and save the time and expense of appeal.  Usually, the Examiner will encourage this if an interview is sought, opining that an amendment would overcome the rejection of record.

After the RCE is filed, the Examiner searches a little more, just enough to come up with some reason to reject the application again.  At this point, the entire process repeats, potentially endlessly.  Needless to say, this is not the way an examination should be conducted.  It may be 2 or 3 RCEs before the applicant realizes that the Examiner is unlikely to ever allow the case without an appeal.

Reopening Prosecution After Appeal

Another result of the Examiners’ performance system is the frequent reopening of prosecution after an appeal is filed.  The majority of the time when an appeal is filed, the Examiner will reopen the case and send out a new office action rather than prepare an Examiner’s Answer.  Preparing an Examiner’s Answer does get the Examiner a Disposal Count, but it also takes a long time and requires the Examiner to conduct an appeal conference.

In an appeal conference, the Examiner’s supervisor and a third person review the Examiner’s work.  The Examiner may not welcome this scrutiny. To avoid this hassle, an Examiner may instead reopen the case and change the rejection in the hope that another RCE will be filed.  Sometimes this may happen three or four times in a row, which can be very frustrating.

Now you may understand better why Examiners do some of the strange things they do.  But how can that information help applicants in prosecution? I will explore the ways applicants can take advantages of the Examiners’ incentives in Part 3.

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.