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.

Applicants may accompany their representatives to such interviews. An interview is your best opportunity to meet and speak with with the Examiner. If you can make it to the Patent Office in Alexandria, Virginia (just outside of Washington, D.C.), a face-to-face meeting with the Examiner can be very gratifying.  Otherwise, a conference-call interview may be conducted over the telephone.

Interviews are often the best way of reaching an agreement with the Examiner on allowance of an application.  Examiners are generally more cooperative when you get them face-to-face. There are pluses and minuses to an inventor accompanying his or her representative to an interview at the Patent Office. A minus is that inventors are generally unfamiliar with all of the legal rules of patent prosecution, and of the legal import of various words and phrases.  The inventor may well slip up and use certain words that indicate, in the Examiner’s mind, that the application should not be allowed.

On the other hand, the inventor generally knows the invention better than anyone.  Sometimes, the Examiners struggle to understand what an invention is, or how exactly it works.  An inventor may be the best person to explain this, to provide other necessary technical background, or just to give the Examiner a feeling for the real-life applications of the invention.  Examiners like to know if an invention is being used in the real world and does not exist only on paper.

If you would like to meet with the Examiner and understand better what is happening with your examination, it is a good idea to speak with your attorney and see if an interview can be arranged and if you can attend.  By working with your attorney and establishing general guidelines (perhaps, speak mainly when prompted by the attorney) you can be involved in the prosecution process and provide valuable help to your attorney, without jeopardizing your application.

After you have decided that you need a patent and have selected a patent agent/attorney to represent you, the next step in the application process is preparing the application itself. You can find more information on what goes into a patent application in a future post.

Typically, you send the information you have on the invention to your patent attorney, and he or she will go over it, ask you questions about the invention, and prepare a draft application.  After you review it for accuracy and approve it, your attorney will file it. At this point, the day your application is filed becomes the filing date for your application. This is an important date, as I will explain in detail below.

The Waiting Game

Next, you wait for your application to get picked up by an Examiner.  This takes a long time, because there is a large backlog of applications at the Patent Office and your application has to get in line at the back.  The Patent Office is hiring as many new Examiners as it can, but it can’t keep up with the rising number of new applications.   This backlog has grown to over 600,000 applications, as of 2008.

How long it will take for your application to work its way through the backlog depends on the type of invention.  Typically you will wait over 2 years before you receive word from the Examiner.  I will provide more information on the length of this wait in a future post. In some cases, you may be able to skip ahead in this line by requesting accelerated examination.

Examination

In the Examination process, the Examiner reviews your application for compliance with the law. If your application is ready in every way to be issued as a patent, you will be sent a Notice of Allowance informing you that your patent will be issued upon payment of the issue fee.  However, applications are very rarely initially found to be in condition for allowance.  Almost always, the first paper you receive from the Examiner will be an Office Action informing you that your application is presently inadequate and has been rejected.

The first Office Action

The Office Action may reject or object to your application because your drawings are prepared improperly, because your claims are confusing or unclear, or because certain parts of the text of your application are not prepared according to the formal requirements of the Patent Office.  But the heart of most rejections is a finding that your invention is not novel or is obvious in light of the work of others.  Much of the Examiner’s job is to search through patents filed before the filing date of your application and papers published before the filing date of your application to determine whether your invention has previously been invented by someone else, or is only an obvious variant of previous inventions.

Do not be intimidated! Many inventors who are not familiar with the application process become discouraged after reading the Examiner’s explanation of why their application has been rejected.  Often Office Actions are full of legal jargon and impenetrable logic.  The Examiner will almost always try to make it seem that your application has no chance of success.  Yet, most applications do end up as patents.

The Response

You get up to three months to respond to the Office Action, or up to six months with payment of extension fees that escalate each month after the third.  Your attorney will prepare a Response to the Office Action, addressing all of the Examiner’s arguments.  This Response may explain why the claimed invention is different from the previous inventions, or “prior art” that the Examiner cites against the application.  It may also amend the claims to make clearer how the invention differs from the prior art. Any objections to the drawings or to the form of the application will also be resolved.

The Examiner will then consider the Response and either maintain the previous rejections or withdraw one or more of them.  If the rejections are withdrawn, the Examiner may then allow the case and send a Notice of Allowance.  More frequently, the Examiner will take another look at the prior art and send a new Office Action with a new reason for rejecting the application. Usually you will wait about two months after your Response before receiving a reply from the Examiner.  If timing is a concern, your attorney can call the Examiner and see when your Response will be reviewed.

The Second Office Action

If the Examiner realizes that the previous rejection was just wrong, the new Office Action will be non-final.  However, if the rejections are maintained or if the new Office Action was necessary only because of some amendments that your attorney made to the claims, this second Office Action will be final.

After-Final Practice

After a final rejection, your attorney may send another Response arguing that the application should be allowed.  However, if the Examiner is not convinced, you will not receive another Office Action.  Furthermore, amendments to the claims are not allowed if they would change the scope of the claims and require a new search for the Examiner.

To avoid your application becoming abandoned, you must either file a Request for Continued Examination (RCE) or a Notice of Appeal before your 6-month time period for response expires.  An RCE allows entry of further amendments and requires the Examiner to give you a new Office Action.  Usually that Office Action will be non-final, and the cycle will repeat.  An RCE is used if you would like to continue to work with the Examiner.  A Notice of Appeal appeals the decision of the Examiner to the Board of Patent Appeals (Appeal Board), where a panel of expert judges will review the Examiner’s rejections and determine if they are in accordance with the law.

Many times, even when facing a difficult rejection, I can find a way to tweak the wording of the patent application to satisfy the Examiner and achieve allowance of a strong patent.  But sometimes, it just isn’t possible to reach an agreement with the Examiner.  Sometimes you simply reach an impasse with the Examiner over a particular interpretation of the wording of the patent application or of the relevant law.  When you get “stuck” on an important issue where you have a disagreement with the Examiner and cannot get around it, it may be time to appeal.

Other times, something else is going on.  Patent examiners have gotten in trouble in the last few years for allowing too many patents, and especially for allowing too many so-called “junk patents” that some feel do not deserve patent protection and generate costly litigation. Therefore, there has been a recent emphasis in the Patent Office on “patent quality.”

In reality, the emphasis is often on rejecting a patent application using any available argument.  Patent Examiners can get in serious trouble if they allow too many patents, but almost never get in trouble for issuing improper rejections.  The incentive to reject applications is obvious. The result can be ever-changing rejections that are withdrawn or re-imposed in each Office Action.  This is a clue that the Examiner is looking for a way, any way to reject your application.  This may be the Examiner’s own initiative, or may be an instruction from his or her Primary Examiner or Supervisory Patent Examiner that they do not feel the application should be allowed.

Usually, when an Examiner is willing to acknowledge arguments of the Applicant’s counsel and modify his or her rejections, this is a good thing and indicates that the Examiner is reasonable.  But when an ever-changing array of different rejections of seemingly little merit are imposed over and over, it is time to stop working with the Examiner and go over his or her head to the Board of Appeals.

Patent attorney or patent agent?

Patent law has a specialized bar, the patent bar. Passing this bar allows you to practice patent law before the United States Patent and Trademark Office.  Unlike virtually every other area of law, you do not have to be a lawyer to pass this bar .   However, you do have to have substantial technical experience, typically a university degree in an engineering or science discipline.  A lawyer on the patent bar is known as a patent attorney .  A non-lawyer on the patent bar is known as a patent agent .

Most lawyers can never be patent attorneys (they lack the technical prerequisites), and most patent agents are not lawyers.  Every patent agent and attorney has a registration number.  Since these numbers are sequential, you can get an idea for how long an attorney or agent has been practicing on the basis of their registration number. You can verify that someone is a registered patent attorney/agent here .

What is the difference?

So, what is the difference between a patent agent and a patent attorney?  A patent agent is not a lawyer .  A patent agent can only represent you before the United States Patent and Trademark Office (PTO), which is an administrative agency of the United States government.

What if you appeal your patent application to the Board of Patent Appeals and Interferences (part of the PTO) and lose, and want to appeal to district court or the Court of Appeals for the Federal Circuit, as is your right?  A patent agent cannot do that.  What if you want some  help with a licensing agreement or some advice about what constitutes infringement of your patent?  A patent agent cannot help you with those issues- it would be against the law for a patent agent to give you such advice.

A patent agent cannot help you with infringement issues or licensing issues, or with corollary issues such as trademarks, copyrights, or trade secrets. This goes beyond what they are licensed to do- practice before the Patent Office.  You do not need to have any knowledge of the broader legal issues mentioned above to join the patent bar.

So the role of a patent agent is very narrow.  A patent agent cannot be your go-to guy for all intellectual property.  If intellectual property is a significant part of your business plan and you have worries about infringement or expect to need trademarks in addition to patents, a patent agent may not be the best choice.  In fact, I would even be concerned about using a patent agent just to prosecute your patent applications.  If a patent agent cannot tell you anything about infringement, how can they draft solid patent claims that protect you against infringers?  The art of claim drafting is the art of using the perfect language to capture your invention and avoid the prior art, while still managing to capture infringers and prevent others from designing around your patent.

My recommendation

In short, patent attorneys have been through three years of law school and passed a state bar exam.  On average, they have more knowledge about a broader range of intellectual property issues.  Of course, this also means they charge more than patent agents on average.  If you know what you are doing, have a narrow need (prosecution of a patent only), and know a good patent agent that provides a superb value, going with the patent agent may be the right move.

On the other hand, if you can get a good patent attorney for a similar price, are new to patents and need a lot of questions answered, or anticipate making use of a knowledgable patent attorney throughout the life of your business, I recommend choosing a patent attorney.

Please let me know if you have any questions I have left unanswered or if you feel I have misstated anything.  I may catch some flack from some patent agents But, I think I have been fair.  Any agents out there, you can make your case in the comments below.