Persuading Examiner Through Examiner Performance Statistics?

In recent months, a few services have come online that provide ways to determine, among other things, whether a particular examiner has longer pendency, more rejections, and so on, than others.  Can be useful information to see how long you can expect a case to remain pending, for example.

What I was shown, however, was that some lawyers are taking those reports to examiner interviews and, it seems, saying in effect, “look how slow  you are compared to your colleagues.”  This seems questionable to me.  It’s not merits-based.  I’d also be really suspicious of lawyers who do not make those documents of record.

I am not sure if the PTO will take a stand on this, but I wouldn’t want to be the test case.

What do you all think?

About David

Professor of Law, Mercer University School of Law. Formerly Of Counsel, Taylor English Duma, LLP and in 2012-13, judicial clerk to Chief Judge Rader.

14 thoughts on “Persuading Examiner Through Examiner Performance Statistics?

  1. 10

    I am not against – and find NO issue with – the use of any such data in the contexts given. It very much is germane to the discussion if a larger scale view of the examiner shows an unhealthy proclivity.

    That being said, it is utter f001ishness to attempt to use such data “as a bluff” without being prepared to having that bluff being called (in other words, if you are going to make any such data an issue, you damm well better be ready to make it of record).

    Random – I would absolutely LOVE to confront you with your record. I will not be so banal as to ask yourself to “out” yourself, but based on your wildly errant views on 112 and the ladders of abstraction, I would dare say that if your actions match your professed beliefs, the data would not be your friend.

    Further, it should be made abundantly clear that my chosen matter of conversing on these threads is a deliberate choice of brusqueness; and that I am well aware that the context of being on the record with the Office calls for a far more civil tone. But the point should also be clear that being more civil requires NO change in the positions that I have put up on these threads.

  2. 9

    It’s useful info that I sometimes share with a client – another data point to help us know who we’re dealing with. But throw it in an examiner’s face? Maybe if I really hate the client…no good can come of it.

  3. 8

    What I was shown, however, was that some lawyers are taking those reports to examiner interviews and, it seems, saying in effect, “look how slow you are compared to your colleagues.”

    You were “shown” this? Can you elaborate on this? I’m having a difficult time believing that it has happened, or at least that it happens with any frequency, but I could just be naive.

  4. 7

    So you want to insult a person who will decide an issue that someone else is paying you to prosecute? Is this a good business model? is this the way to make friends and/or influence people?

  5. 5

    I’m not sure what effect this would have on me. Id like to say none but honestly, when I get a case from a less than friendly attorney im less likely to grant a fourth interview after final to look at data. When attorney’s treat you like crap, make bogus arguments or are condescending you certainly don’t go out of your way for them.
    I think this would be similar. Try to pressure me with data and I’ll probably be less likely to enter that boarder line after final when it requires further search but not a lot.

    1. 5.1

      Oh and the documents would be of record. Id definitely attach as part of the interview summary.

  6. 3

    By the way, saw a presentation today here in Denver from the fellow, a professor at West Virginia University, and a former examiner, who put the dataset together that Lexis/whoever no owns. He has done a lot of interesting larger-scale analyses based on the data, but nothing particularly surprising, so far, to me from what he talked about.

  7. 1

    David, I don’t know the right answer, but I would send a letter to the Director/Commissioner pointing out what is happening and recommend that Director/Commissioner refer the issue to the office of enrollment and discipline for their recommendation.

    1. 1.1

      It is interesting, isn’t it. I would not want to be doing this and NOT making the ‘data’ of record.

      I speak on panels with the OED director every so often and will mention it to him. I suspect that folks at high levels know about this, since I do!

Comments are closed.