USPTO Director David Kappos has announced a set of proposed changes to the patent examiner count system. The proposed changes are not dramatic, but they may have some incremental benefit of reducing RCE churning (see below). The proposal also provides for an additional hour of examination time per case with the expectation that the added time will be used up-front in an interview or in preparing a quality first office action on the merits (FAOM).
The Count System: Under the current count system, examiners receive “counts” for various actions and must meet a certain quota every two-weeks. (The quota varies according to art unit and examiner grade.) Under the rules, one count is awarded when the examiner issues an initial office action rejection and a second count is awarded when the case is disposed-of. Because no counts are awarded for second or subsequent office action rejections, the current system is supposed to encourage examiners to quickly move a case to its conclusion.
RCE Churning: When an applicant files a request for continued examination (RCE), the examiner receives a count as a disposal. At that point, the current count system treats the application as new – thus the examiner can receive a second count for mailing another office action rejection and one more count for eventually allowing the application to issue as a patent. Thus, by “forcing” the RCE, the examiner receives four counts instead of only two. (Note – “Forcing” is in quotation marks because examiner’s do not actually applicants to file RCEs.) A similar practice takes place with restrictions where the examiner pushes an applicant to divide a single patent application into multiple applications. In that scenario, the examiner can at times earn multiple counts for reexamining what are essentially identical inventions.
The proposed package would make some modifications – focusing especially on RCE practice. Under the proposal, the first RCE would only be worth 1.75 total counts (rather than 2) and any subsequent RCE can only be worth 1.5 counts. Examination of the original application would still be worth the same 2 counts, but the distribution is slightly shifted. Under the proposal, the first office action on the merits (FAOM) would garner 1.25 counts; a final rejection earns 0.25 counts; and eventual disposal leads to 0.5 more counts. If no final rejection is issued, then the disposal would be worth 0.75 counts. Thus, examiners will still receive credit for examining RCE’s – just less credit than before. The proposal does not appear to address the restriction practice.
Encouraging substantive interviews: The proposal would also regularly grant one-hour of “non-examining time” for preparing for and conducting interviews. This would effectively reduce the examination quota of examiners who conduct interviews.
Examiner Mistakes: The PTO management appears to have come to an agreement with the examiner union POPA on these reforms, although the membership will still be asked for their approval. Interestingly, the documents distributed by the joint task force appears to show some changes on the review of examiners for mistakes in office actions. Notably, the proposal would not allow an examiner to be negatively treated “based upon a single clear error in Patentability Determination” even if the examiner has already received a warning for prior mistakes.
The proposal also includes a new “formal policy” of “working on the earliest filed applications on [an examiner’s] Regular New Case docket first.” This would block the game played by some examiners of cherry picking easier cases to examine earlier.
Documents: briefing_for_corps_final_draft-093009.pdf
Rule of Nine Proportionality “His proposal is a first step to reforming the count system, but if something is not done to INCREASE THE COUNTS proportional to the AMOUNT OF TIME it takes an Examiner to dispose of a case quality will suffer”.
You have a very serious flaw in your recommendation. I love your idea, but examiners will work like snails if they know they will get counts proportional to the amount of time to dispose of an application.
MM- Why do I wish that I could allow more? It would mean that I would see more novel/ non-obvious applications then the stuff that I normally see.
I wonder how many attorneys would appreciate me increasing my allowance rate? Would these same attorneys scream or laugh at the bad applications that I allow because of that increase?
Oh, but they say, my applications are different. The USPTO is large enough and the TCs are varied enough that their applications are probably different. I happen to work in a crowded art, you probably practice in an area that is not.
His proposal is a first step to reforming the count system, but if something is not done to INCREASE THE COUNTS proportional to the AMOUNT OF TIME it takes an Examiner to dispose of a case quality will suffer.
I blogged about it here: link to scholasticsophism.blogspot.com
“As a matter of equity, he should not raise RCE fees until he significantly reduces the BPAI backlog.”
Applicants would have to come to the table with clean hands before they get a remedy in equity. Fat chance of that ever happening.
Examanona: “I don’t believe that every application should receive a patent. I wish that they did. I wish that I could allow more.”
Why?
Your issue appears to be a matter of training. I wish that we had more training. Lucky for you and your peers, the PTO training budget has been cut.
I believe that the current system and the future system are both fundamentally flawed. I agree with Noise above Law regarding that. The new system will prove true the idea of unexpected consequences.
“Management already disclosed the more arduous task K is up to. He wants to raise your fees by about 4x. And even more for RCE’s”
As a matter of equity, he should not raise RCE fees until he significantly reduces the BPAI backlog.
“The fee increase are NOT the system reboot that I am talking about.”
No, they’re not, they’re the system reboot that K is talking about.
Try to stay up to speed K?
Sorry 6, your ignorance is in the way again. The fee increase are NOT the system reboot that I am talking about.
Try to stay up to speed m’K?
“I am looking forward to the separate analysis by Lord Kappos on the larger overhaul of the system including quality metrics. The current reconfigure of the counts is nothing more than a band aid, a temporary “fix”, until the larger and more arduous task is addressed.”
Management already disclosed the more arduous task K is up to. He wants to raise your fees by about 4x. And even more for RCE’s. Funny enough, that just happens to be the suggestion I made.
Thanks curious, even through the rambling, I got a better picture of where you are coming from and can identify with your thoughts.
Examanona does have a point. Unfortunately, it may not be the point he is trying to make. “blaming” is crucial if the area where the breakdown is to be found and fixed. This will not be an easy task, and the Office in the past preferred to try to change the law rather than face the task.
Treating all applications like a generic average and treating examiners like cattle, herding them through examination of applications of the non-existent average count is the problem. It is a management philosophy problem. It is the structure of the game. “gaming” the system is inevitable as long as the system is managed like it is.
On other threads I put forth a radical reworking of the system that had as its premise the treatment of an application on its merits. If you look at the jurisprudence of the anti-brightline rulings of the Supremes, you will see the origins of that premise.
I am looking forward to the separate analysis by Lord Kappos on the larger overhaul of the system including quality metrics. The current reconfigure of the counts is nothing more than a band aid, a temporary “fix”, until the larger and more arduous task is addressed.
Examanona: I am not angry, frustrated maybe, but not angry. I have been in private practice almost 30 years so your explanation to me of how the patent examination system works was really not needed. I also know when to recommend to a client that his invention is not patentable and his application should thus be abandoned. . Yes, I know that your job is tedious, demanding and challenging. I know that you do not have all of the search tools that you should have, and that you do not get the personal mentoring you should get, especially with so many experienced examiners now working from home and not from the office down the hall from yours. I have inherited cases prepared by others and thus have also had to handle poorly prepared applications.
I have watched the examination process slowly break down the past six or so years. Ten or twenty years ago I would sit down with the examiner in his office or over the phone and be able to work out most issues. I always send in proposed amendments and/or arguments days before the interview. Most examiners are not as willing to work with attorneys now at interviews, or later change their mind on agreements reached.
I filed two sister divisional applications nearly on the same day, and the same examiner examined the more difficult one almost two years after the easier one. (The PTO should have a procedure whereby the examiners cannot delay examining the more difficult cases.)
Every pre-appeal conference I have had (usually after an RCE or two), the PTO has changed its mind, withdrawn the rejections and then issued new rejections over new art. My client asks why the PTO continued to issue defective rejections over and over despite our clear arguments before we filed our appeal, and also why the PTO did not find the new art in the first, second or third OA. Then in a couple of those cases, the client correctly questions how the new art is applicable. Believe it or not, but it pleases me (more than my client) when I see solid rejections because I know the examiner is doing his/her job. And when I see those rejections, I amend to overcome them (or when justified recommend that my client throw in the towel).
I would appeal more poor final rejections but because the BPAI backlog is so horrendous my client will be without a patent for years. This can be fatal where the product has a short commercial life.
Enough rambling, it is getting late. Thanks for listening.
Oh curious, why are you so? Your attitude, seems to show anger.
“why shouldn’t applications be given priority numbers by type and filing date and examiners be punished if they take them out of order?”
If you punish people, they will avoid the punishment. Occasionally you get the results that you desire.
I am very much trying to be open. I see lots of bad examiners and lots of bad attorneys. No need for me to pick one side as saying that it is worse. There are many on this thread that will do so for me.
My problem with the RCE conversation as broje states is that there is an assumption of wrongdoing. Have you ever thought about going through the reasons why? I am not talking about blame, I am talking about discussions of process flow.
For example, an application is presented with broad claims. The Examiner matches the claim breadth with broad art. The attorney amends around the presented art with narrower claims.
Where is the problem here? The problem could either be with the attorney or the examiner. You pick.
You could say that the broad art presented is garbage. Fine. But so were the claims.
What happens next? Many attorneys repeat this process over and over. RCE land. Narrow a little more, reject a little more. (Before you yell at me, ask me what I do in this case.)
Oh, yeah, I have read and heard all the arguments at this point also. I still feel that both sides are culpable here also.
For example, I have tried in interviews to get the attorneys to discuss the invention and not the presented art. Many times attorneys will just focus upon what is presented even when I tell them that their suggested amendment is obvious.
I also know of examiners that are poor at responding to interviews and don’t offer suggestions.
I don’t believe that every application should receive a patent. I wish that they did. I wish that I could allow more. I am not being prevented by management but more by my own personal ethics.
Do attorneys really want me to allow everything that passes over my desk? Should we as examiners tell attorneys to give up all hope?
Please stop blaming. The system is broken and the new system will be worse. We are people that respond to rewards and punishments. The new system is all about the punishment with little reward.
good points, broje
MM said, “And just for the record I’ll say it again: ANY system that rewards Examiners for allowing claims is a broken system. It’s like rewarding food inspectors based on the number of “approved” stamps they put on jars of baby food. Insane.”
Would you also say that any system that rewards Exmianers for rejecting cases, or that punishes Examiners for allowing cases, is also a broken system?
Would you agree that a system that let’s Examiners do less work for the same amount of credit if they reject a case rewards Examiners for rejecting cases?
Would you agree that an Examiner who is already familiar with a case and has already searched the art for those claims or very similar claims has to do less work than they would for a new case with which they are unfamiliar?
That don’t impress me much, Linda.
The EPO (at least in medical device arts) gets its first Action out within 3 to 6 months of your filing at the end of the Paris year. The EPO EESR includes a world-class search report. You can be more or less certain that the EPO will not do any more searching at any later stage, on that application. Therefore, if you can overcome that art, you’re through to issue.
Is that how it works also in Korea?
I went to a class and attorneys there said that KIPO was producing first Action in under 9.8 mos. They named better technology, better supervision, better mentoring, outsourcing searching. I am not popular for passing this on.
why shouldn’t applications be given priority numbers by type and filing date and examiners be punished if they take them out of order?
To understand why the TCs have different RCE rates is also similar to why some TCs have higher first action allowance rates. The question itself implies that everything is equal. It is not.
The new rules are designed to reduce RCEs by punishing work on them and encouraging work on new cases. In case you missed out, new cases include Divisionals, Continuations and Continuations in Part. If you file an RCE, the RCE is placed in the same queue as these other new case types.
Why attorneys are not upset with this idea is odd. Do you understand that within a queue where the examiner has a choice to work A or B and A is worth more, the Examiner may just make the logical choice.
Additionally, the new system cheapens allowances. We are now encouraged to allow-allow-allow. I guess if you are a prosecutor and not a litigator, then your success rate goes up. But what do you gain in the end?
Malcolm — venture people are involved in very few applications. Most applications are by large/medium size corporations without venture people involved.
“The overclaim rebuttal by 6 has been listend to and found not to be persuasive”
I doubt you listened. In fact, 6’s “rebuttal” is entirely consistent with the way that many clients choose to pursue intellectual property. We’ve been over this before, a million times. Attorneys who deny the practice described by 6 are, quite simply, liars. As for why an attorney would spread such garbage anonymously, we can only guess. But we’ve known quite a few patent prosecutors in our time who lack a solid moral foundation (seems to go along with a lack of intelligence, go figure).
As noted upthreaad, the operating procedure is that the client (i.e., the corporation) needs money. In order to get the money, they want an impressive set of claims because “that’s all the venture people are going to read anyway.” All we can do as attorneys is counsel the client contact (i.e, the “in-house attorney”) that the broad claims are unlikely to be granted and will lengthen the time and expense for prosecution and will ruin attempts to expand the claim scope via the doctrine of equivalents. Nine times out of ten the client contact acknowledges these facts but his/her hands are tied by — you guessed it — the CEO and the board and the other folks who are trying to raise money and just want a big pile of applications and impressive looking claims to wave in front of the faces of investors.
Yes, it is depressing. Thankfully not every client operates like this but plenty do. Again, to deny is to lie.
And just for the record I’ll say it again: ANY system that rewards Examiners for allowing claims is a broken system. It’s like rewarding food inspectors based on the number of “approved” stamps they put on jars of baby food. Insane.
SPQR, now do you believe me when I say there is a large amount of liars in the PTO?
To: just passing through @ 11:23am
Your question and observations were not really the point of my post, but I don’t want to make anything worse. So, I think I can help explain a few things.
First, I have 17+ years at the Office and in all that time I have never known management to willfully lie about anything. About outright lying, I don’t think it’s in their power to do that, but I do think they can and do lie by omission. It’s pretty common, in fact, as a parent I admit to having done that too. And, I think they do that for the same reason I did, to try and make things better, not worse.
In the excerpt above, the examiners they are referring-to are not all examiners, but only the examiners that they know by PALM are having too many RCEs, so the intention is to fix that by dealing with multiple, generational, RCEs by giving progressively fewer counts for the first and then the second RCE, and then all RCEs beyond the second are capped at the lower count reward value of second RCEs.
The comment in the FAQ was not meant for, or directed to, all the other examiners outside this group.
I guess the point is that, in order to understand the “why” of this proposal, you have to look at the plan like management does.
I admit I don’t understand the why of this plan, a lot doesn’t make sense to me, but I think that is by design, after all, I only have a small portion of what can be known.
Management has the most information, everyone else has a lot less.
So, think about it, management had to have a plan that addresses multiple competing interests, and to try and do that in as fair a way as possible. That’s the crux, how to be fair. And, as an examiner, I know that “fair” is a subjective term. It really isn’t possible to be fair to everyone, since no one will, or can, agree on what is fair.
The plan has to be perceived as, at least, an attempt at fairness, or else it doesn’t have a chance of being adopted.
I think that in the beginning, management understood that for the plan to succeed everybody has to hurt a little so everybody can gain a little, and thereby, move the whole count system off dead center, to a place where, eventually, more change is possible.
In this equation only management knows enough to make this fair, if fair is possible.
Unfortunately, and probably inevitably, the position we the examiners are in is that we have to trust management in this. They are driving the bus, and we can apply the brakes. We probably make them more nervous than they make us. They need us to stay off the brake for this to succeed.
As for myself, I only trust them to do what’s best for management, and additionally, I hope they’re doing what’s best for themselves in the long term. I think that’s the best shot we the examiners have, that management understands they will stand or fall on how the plan plays out over the long term.
If the plan is adopted, and then if it eventually fails, i.e., lower productivity and more senior examiners leave early, (upper) management stands to lose the most, their jobs, because Congress can insist on that, that’s ultimately who management answers to. I’ll still have a job, if I want it under the new system. I get to choose to stay, management won’t get to choose.
You didn’t ask for this explanation, but this is my interpretation for what it’s worth, and no, I don’t think there is anything rotten in this, just competing interests working themselves out.
Thanks for the comment.
Examanona said “Various TCs have different RCE distributions.” It would be interesting to know why this is. (Do you know, Mr. Kappos??? If not, why not?)
There may be legitimate reasons for it or maybe the examiners in the TCs with poor (excessive) RCE numbers may be encouraged or at least not discouraged from exploiting the RCE system.
SPQR 451 quoted the FAQ as saying “The RCE adjustment is not a rewarding of more time. It is an adjustment to mitigate the impact of the reduced RCE counts.”
If true, this makes the increase in examination time seem like a complete sham. If the examiners really aren’t going to get more time to examine applications, why is the examiner’s union supporting the change?
What is the agency really trying to do with RCEs? Something smells rotten.
From the online document “Proposed Count System Package – FAQ’s”
Question 16 is…
“16) Why does the proposed count system reward more time to those with higher RCE percents than examiners who exercise compact prosecution (and thus have a lower percentage of RCEs)?
(Management’s answer)
There are multiple reasons why an RCE is filed, and many of these are solely due to applicant behavior. The RCE adjustment is not a rewarding of more time. It is an adjustment to mitigate the impact of the reduced RCE counts.”
Finally, proof that PTO management believes “RCE Churning” isn’t all about victimizing the poor attorney.
” Or will that never happen with the current budget?”
Actually congress is giving the money for that task force iirc from the directors. Someone asked about where the millions would be coming from.
I could be wrong about that though, but either way, it still has to be done per mandate.
“That’s all. It’s not non sequitur. ”
He’s right, if you just stay with the old system calc no harm done. (well, very little harm, because you might have been attempting to gain mad FAOM counts under the new system, then fell short under the new system, but since you didn’t do enough RCE’s the low counts you get under the old system for FAOM’s might f you big time. Big time. That is, if you shoot for a lot of FAOMs you could f yourself. You really gotta pick a system and go with it) Until the next year when they put the new system into place permanently and don’t allow the option to have production calced under the old system.
Kill it now in its infancy unless K man agrees to pay up for actions already done.
I still can’t believe that POPA would sign off on this once it was brought to their attention. Apparently they’re just too dimwitted. Which is what I feared from the beginning.
“Therefore, the public is not negatively impacted because the new system is not the only one in place. ”
What happens if we approve the system, and an examiner is “left behind”, caught in the “safety net” at the end of next year and then keeps examining into year two where they no longer offer the safety net? Does the public lose out then?
You don’t seem to understand that the safety net does nothing but “push back” the “harm” to the public until next year.
But don’t worry Jules, I know, I know, it’s hard to understand. A little complicated.
“retroactive reduction in hrs per BD”
Yours is obviously the easier position to take, given that everyone wants the most for the public.
My contention is not a guarantee that every examiner gets at least 1 net additional hour over their FY09 expectancy.
My statement, regarding the safety net, is simply that the safety net ensures that there are no “lost hours” because the old system is virtually still in effect during the transition.
Safety Net 9.B: “Where performance issues arise, including performance actions, promotions and WIGIs, production shall be calculated using both the old and new system. The best result for the employee will be used to determine the production goal achievement element in the PAP.”
Therefore, the public is not negatively impacted because the new system is not the only one in place. Examiners, however, may be negatively impacted because it may be harder to get a bonus.
Safety Net 9.D: “The safety net shall be available for performance actions, promotion eligibility, and WIGIs, but not for awards.”
However, the difficulty in attaining a bonus would probably be good for the budget of the patent office anyway, given that they are looking for ways to save money.
That’s all. It’s not non sequitur.
It is certainly the harder position to take. Your argument is just a cut-and-paste from Tafas ;). How can you expect any change to the production system to be perfect? USPTO and POPA say there will be ongoing readjustment and reevaluation built into this change. However, if the first change never gets off the ground, will there ever be another shot at it? Is there not still an independent evalutation to be done without USPTO and POPA? Or will that never happen with the current budget?
Jules, your non sequitur is duly noted.
Did the PTO “task force” pay you for this propaganda?
Please explain how your “safety net” panacea ensures that every utility and plant examiner receives at least 1 net additional hour over their FY09 expectancy?
Please also explain how the new count system ensures that every utility and plant examiner receives at least 1 net additional hour over their FY09 expectancy in light of the retroactive reduction in hours per BD for “transition FAOMs”?
Don’t worry, the PTO “task force” couldn’t answer these questions either.
Rules Officially Rescinded!
It is interesting that this entire discussion is based on applying old rules and old actions to new rules. Why do you feel that examiners will do the same work under the new rules as we did under the old rules?
Gaming a system? Think incentives and penalties. We are paid hourly for piecemeal production. As the two metrics are still out of alignment, the overall result of this change will be negligible.
Also. Various TCs have different RCE distributions. Your opinions of the RCE percentage may be correct and incorrect simultaneously.
The new rules reward examiners that have high RCE percentages. I am not one of them.
If the PTO classification system were updated, examiners might rely on it more for their searches instead of key word searches which often turn up nonanalogous art.
6 said, “the problem is that US attorneys are often just as lazy as US examiners are alleged to be. There simply is no other explanation.”
Granted, attorneys sometimes are under pressure to churn out responses in just a couple of hours. Generally though, I think attorneys have more time and are more than happy to use it up doing the best job possible in the allotted time.
I think what sometimes seems like obstinance or laziness on the part of attorneys is that Examiners’ interpretations of claims and understanding of teachings of references and reasonings for obviousness are not as apparent as the Examiners think they are. I think a lot gets lost in translation, and those are the times when interviews seem to be most helpful. Just clarifying the rejections and getting on the same page can help immensely. I wish Examiners were rewarded for calling up Applicants to discuss the arguments and amendments and clarify them before search and exam. I think that would yield a vast improvement.
“retroactive reduction in hrs per BD”
I applaud your taking a stance for the public good. However, as I pointed out in another thread:
The Safety Net keeps both old and new systems in place and the better one is used. Therefore, there is no loss in credit/time for “transition FOAMS” unless, possibly, the examiner is going for a bonus.
The overclaim rebuttal by 6 has been listend to and found not to be persuasive. It has nothing to do with a crappy first action based only on keyword search and a crappy second action ignoring the applicant’s reasoned response as to why the first OA was nothing but crap. Honestly.
put down the pipe 6.
Tell me folks: what am I to make of the flippant remark, endlessly repeated by US patent attorneys of my acquaintance, that a FAOM without novelty objections is “proof” that the drafting attorney was guilty of a crime called “under-claiming”?
I can’t understand the thinking behind such remarks. Deliberately to provoke novelty objections seems to me to be doing the client a dis-service. Rightly or wrongly, I see such deliberate provocation as a strong factor in:
1. reducing the level of mutual respect, between attorneys and examiners
2. causing a backlog and increasing pendency
3. incentivising sloppy searching at the PTO
4. drafting without first researching the state of the art.
But I don’t forget either the pernicious effect of the incentive under English common law to turn a Nelsonian blind eye to the detailed content of the prior art.
“I didn’t MAKE the applicant do an RCE (as if the alternative of abandoning to the crappy first and second OA’s are really an option.”
Well to be honest he didn’t make the applicant over claim. That is an affliction that arises mainly due to counsel. Blame them.
I would like to reiterate and expand on the previous comments addressing the fact that every original application for which an examiner only receives 1 count for first action and does not receive a disposal count before implementation of the new count system will only receive .75 counts for disposal.
As noted elsewhere this incongruity results in inconsistent treatment of applications that affects both examiners and applicants. This occurs in part because only granting .75 counts for disposal of these “transition” cases results in a retroactive reduction in hours per BD for FAOMs completed in FY09 but not disposed of before implementation of the new count system.
For example, if an examiner currently receives 15 hrs per count (30hrs/BD) and has the PTO average RCE mix, they will receive 16 hours per count under the new system. Therefore, for every “transition FAOM” on their docket they would have received 15 hours for the FAOM under the old system, but under the new system they will only receive 12 hours (.75 count x 16 hrs) for the disposal. This causes a retroactive reduction of 3 hrs in examining time for these original applications because the examiner only receives 27 hrs/BD for these “transition” cases as opposed to the 30 hrs/BD they were receiving under the old system.
The reduction in time also negatively affects any applicants with “transition” applications because of the reduced time given to act on these cases. For example, since any FAOMs completed in Q1 of FY10 will only receive .75 disposal counts and reduced hours per BD as compared to both the new and old count system, examiners will have less time to act on these “transition” applications.
To further illustrate this problem, if this examiner has 50 pending “transition FAOMs” on their docket when the count system changes they lose 150 total hours or 9.375 counts under the new system (3hrs x50 cases/16 hrs/count) because the pending cases only receive .75 counts for disposal.
Furthermore, because “transition FAOMs” will only receive 1.75 total counts it appears that the slides prepared to explain the new count system make some incorrect assumptions. For example, slide 7 on the USPTO website seems to assume that ALL regular or original applications receive 2 total counts, when this is clearly not the case because pending “transition FAOMs” will only receive 1.75 total counts.
Accordingly, in addition to the new count system negatively affecting hrs/BD by reducing RCE counts, it is also apparent that only giving .75 counts for disposal of these “transition FAOMs” negatively affects hrs/BD. However, while the reduction in hrs/BD caused by reducing RCE counts has been corrected for, the reduction in hrs/BD caused by reducing “transition FAOM” counts has not been corrected for because the correction formula incorrectly assumes that all original applications receive 2 total counts.
From the USPTO presentation and from the comments of Director Kappos and others it appears that one objective of the new count system is to ensure that every utility and plant examiner receives at least 1 net additional hour over their FY09 expectancy. However, because the reduction in hrs/BD caused by reducing “transition FAOM” counts has not been corrected for, it appears that most examiners will not actually receive at least 1 net additional hour over their FY09 expectancy. Accordingly, to ensure this stated objective it appears that disposals for applications which have only received 1 count for an FAOM should receive 1 count for disposal under the new system or the reduction in hrs/BD caused by giving only .75 counts otherwise needs to be corrected for under the new system.
Is the agency sincere in its commitment that every examiner will receive at least 1 net additional hour over their FY09 expectancy in FY10? Only time will tell, but I am assuming that this problem resulted from a mere oversight of the task force charged with tackling this immense issue in only 1 month. Therefore, I am hopeful that the USPTO under the leadership of Director Kappos will swiftly and fairly address this issue before implementing the new count system now that this issue has been raised.
“To them RCEs are beyond their control.”
This statement does not fall logically with everything else you said.
If they have a better grasp, then they understand the typical path to RCE:
quick and crappy first OA with art bearing only a keyword search relation to the application.
quick and crappy second office action, finding nothing persuasive and going final.
Finally after RCE, taking a real frist look.
The first two steps are done quickly and remove the “newness” – leaving high percentage of RCE’s and the examiner jokingly saying, well, it’s beyond my control – I didn’t MAKE the applicant do an RCE (as if the alternative of abandoning to the crappy first and second OA’s are really an option.
Put down the pipe xephay.
The * examiners whom I know have a better grasp of the law and technology than the average examiner. They know where to find information in the MPEP. They more quickly understand the key concept of the invention, have better search techniques, and argue more pursuasively. They know when do another non-final, when to go final, when to consider first-action allowance, and when to seek approval for allowance. To them RCEs are beyond their control.
And unlike me, most of them don’t spend time reading patent blogs. 🙂
That’s how they game the system.
xephay,
Your story seems to corroborate the popular notion that examiners game the system with RCE’s.
Is that your intent?
“I have to chime in that the 50% RCE number isn’t out of the norm.”
Seems to be the case in our AU. Based on further input from others in the same AU, my “ranking” is moving towards the bottom. About 70% of those surveyed have lower percentages (single digit, 30s, 40s) of regular (original/non-RCE) cases (i.e., higher RCEs).
They are considered the “star” examiners, who are efficient and productive at churning out office actions. They have the lower number of regular cases (versus Corp. Avg of 73).
The observation among us is that those with higher regular cases are newbies or are “struggling” with production.
“The one improvement that didn’t make it in the package that I think should have been included is an increased count for allowance.”
This is like paying a baby food inspector based on the number of bottles he marks “approved” every day.
I can think of another explanation, 6. But nobody on this thread is going to tell it to an Examiner or an alien. I wonder, are you being sarcastic? I can’t tell.
Max, the problem is that US attorneys are often just as lazy as US examiners are alleged to be. There simply is no other explanation.
In my view, every applicant who wants what they should want wants some claims issued and more claims still on file. The actual amend/argue/appeal strategy is irrelevant. If its not an RCE, its going to be a Continuation. Either way, claims will be on file. The only impact of the changes to the count system is that Examiners who allow at least some claims at each stage, resulting in Continuations instead of RCEs, will be rewarded more greatly than those who do not.
Thus, there is an incentive for Examiners to examine the dependent claims more attentively to try and find something allowable, instead of just focusing on the independent claims and rejecting the dependent claims out of hand if the independent claim does not pass muster. There is also an incentive for Examiners to look for some subject matter in the specification that, if claimed, would at least distinguish over the cited references, and suggest that the Applicant claim that subject matter. In my view, these are good things.
I have a question. Why is it that US patent attorneys adopt a “Nelsonian” (telescope to the blind eye) posture when assessing the prior art?
It is not uncommon in Europe to receive instructions from a US law firm, that the prior art reference “fails to disclose” some feature of the claim yet, when one looks at the reference, col 27, line 15 recites it, plain as day.
Is the US attorney supposing that getting through to issue on that ill-founded assessment of patentability affords his client some sort of advantage? How weird.
But seriously, isn’t this way of doing business at the heart of the problem of pendency, and strained relations between attorneys and USPTO Examiners?
50% RCEs is not unusual. The flaw in the reasoning of those who think that it is is that not all applicants are interested in compact prosecution.
One of the biggest applicants, I’m not sure of their exact rank but they’re definitely in top five, uses the strategy of come in with the broadest claims possible, then amend ad-infinitum until they get an allowance. They won’t argue unless your rejection is completely retarded and they never appeal. If you reject all of their dependents they will just add something new from the spec.
Another one of the major applicants also comes in extremely broad and will not amend unless your art totally blows them out of the water with a perfect 102. They will amend to overcome 112s or objections and then appeal. After they lose at the board, they file an RCE, incrementally amend and repeat.
These are huge applicants responsible for thousands of applications. Just because small inventors don’t have the money to prosecute forever doesn’t mean the big boys don’t. If you work in an art unit dominated by major manufacturers, you’re going to have more RCEs because whereas small entities usually read all of the cited art and amend substantively, large entities often don’t.
My TC requires all actions to be turned in by 5pm on Thursday with all corrections turned in by 5pm Friday. Midnight Saturday is an improvement particularly since our bi-week ends at this time.
I find that interviews help me to understand applicants invention through their eyes while also allowing them to see my point of view. I also try to grant all interview requests if possible. Often an interview that I did not initially see as necessary has resulted in moving the case closer to a resolution.
I have had Attorneys refuse to amend or add additional claims to prevent allowance but for the most part I have dealt with excellent Attorneys whose goal was to bring their cases to allowance.
I have been told to reduce the size of my actions and also to explain my rejections more thoroughly. I have been told to get actions out quicker but told not to change my search methods. How can I do one without the other?
Our office has become concerned with quality but refuses to recognize that quality and production are conflicting goals.
While this new count system may not be perfect at least it is a start in the right direction.
Jimmy, I don’t know the first thing about mechanical cases so I won’t comment on them. As for cases with 15-page specs, I don’t get many of those. Of course I agree that simple cases are easier to handle, but few are simple.
There are a few problems I encounter with finding the “best” art. One is that I often get claims drawn to a combination of two very broad classes of products, and there are many permutations contained within the combination. Most of the time these can be rendered obvious by many different combinations of references and for different reasons.
Another problem is that I get a lot of claims which are drawn to products which are ill-defined structurally but the claims contain a lot of functional language. It is very difficult to apply the best prior art when it’s not clear what is being claimed.
Compact prosecution and focusing the issues early must be a cooperative effort. If you receive an office action that’s crap, it doesn’t advance prosecution at all. Likewise, if the claims are ridiculously broad and vague and do not resemble the invention, the first round of prosecution is essentially wasted.
But the PTO is full of liars. Absolutely.
newish3700examiner, don’t let the BSers B-S- you. I know well that some of the worst examiners have very high RCE rates.
What I was taught when I was there is that you cannot survive without a lot of FWCs. It was all lies. Absolutely.
Anon,
I have to chime in that the 50% RCE number isn’t out of the norm. After speaking to several people in my art unit, what is consistently described as typical production on a mature docket, i.e. for an examiner that has been working here for somewhere between 2 and 3 years, is that they just work one new case every biweek, alternating biweeks between regular new and special new.
The above posters are correct in saying that the average number of RCE FAOM’s is deflated by the large number of new hires. I, for example, have been examining cases for a little over a year, and i had 5% RCE’s in FY2009 (4 cases). If you consider that something like 1000-1500 examiners don’t have mature dockets yet (forgive this estimation), you can see that the RCE average becomes extremely deflated by new examiners. And don’t forget that when an examiner leaves, the rest of the art unit absorbs all of their amendments which causes increased RCE numbers for older examiners. In my short time here, I inherited 9 cases to my amendment docket, none of which have advanced to an RCE yet, but only one of which has become a disposal.
This point will be more easily observed next year. I’m predicting a large increase in the average RCE FAOM percentage, due to the hiring freeze.
As per my opinion on the rules package, yes I am a bit ticked off that we’re being screwed out of a quarter count for amendments awaiting disposal after the transition. That being said, I’m in favor of the package. I would have had 20-25% better production during the last year if these rules were in place. Even with the lost quarter count per case that i’ll be eating, I’m expecting that it will still be much easier to make production. At the very least, examiner attrition will be greatly improved, because it won’t be so demanding to build up a mature docket.
And don’t forget about the safety net. If the new production system proves to be harmful, they are also calculating production from the old system in parallel, and they are letting us use the calculation from the old count system if things go south.
The one improvement that didn’t make it in the package that I think should have been included is an increased count for allowance. There needs to be a shift that puts allowance on more equal footing with an RCE if the office really wants to see compact prosecution.
The bottom line is that Examiners who indicate some kind of allowable subject matter (e.g.,in some dependent claims) are going to do better than those who do not do that. The Emaminers who identify some allowable subject matter will not get an RCE. They will get an allowed application and a continuation. Same amount of work. Better pay.
And it won’t be that hard to do. All they will have to do is to stop contruing the claims in an overly broad fashion.
Yeah the tranisition is really the nail in the coffin for that propsal. I don’t see how any examiner can vote for it in lieu of that fact.
Additionally I’d like to know the rationale in granting 2 hours per BD across the board instead of some percentage. I was under impression that the more complex arts needed more time not vice versa.
I’m curious to see if anyone think this reformed count system is going to pass ?
Jimmy, I agree. I write a lot of applications, have worked at several firms over the years, and I find the vast majority of applications are under 20 pages, with most of those around 15 or so pages. I have never written more than 67 pages of detailed description, and that one was brutal for the budget given. That is why I can see an RCE rate of about 25% or lower somewhat acceptable, but an RCE in the stratosphere (like 50%!!!) not.
JJ: You might think so, but apparently you haven’t seen this: link to 1201tuesday.com
Shaggy, I think we can all agree that in simple cases it is entirely possible to apply the most relevant art. This is especially true for most mechanical-type applications, and more especially true for any application with a spec under 15 pages.
Yes, it seems that the office is planning to remove 0.25 counts from every transition case. I have 80+ of those cases. Completely unacceptable.
I fail to see how the RCE rules will modify my behavior at all. I already cite what I feel is the most relevant art and address all dependent claims. Yet I do get a lot of RCE’s, which is frowned upon by many people here. Very few cases go to a second RCE.
I used to try to guess what Applicant might claim next and provide art which might be relevant to that, but I’ve found it’s really not possible to guess which portion of the 300 page spec is going to be claimed later. Since I don’t have a crystal ball, I only apply art for claimed limitations.
I agree that reforming the count system to yield diminishing returns removes, to some extent, the temptation for Examiners to merely read the claims, construe them as broadly as unreasonably possible, and slap down some irrelevent art that was quick and easy to find. I don’t think that necessarily happens in every art unit, but it seems to have been particularly prevalent in my past practice.
That said, in general I am seeing a lot better art being used in rejections these days, especially in first Office actions. It is a striking improvement. However, the Office actions seem to be getting thinner.
What I mean is that there is alot less pointing out by paragrpah or column and line number where each element is taught in the prior art. I’ll see 5 o 6 six claims dismissed with a single sentence that cites nothing except a reference by name. And where the Examiner does make the attempt to cite with particularity, I see many errors, including citing single line numbers instead of passages, with those citation being to sections of the references that are not at all related to the point at hand. Plus I see references being idenitified incorrectly, with the name or number or both incorrect.
But, in general, it just seems like we are being left to read the Examiner’s mind and/or guess at how the Examiner is applying the references. Maybe it’s just my experience, but that is the trend that I am seeing. Better art being cited, but at the expense of less detailed rejections.
A consistent problem is the inattention given to dependent claims. I’ve had Examiners tell me that if I want them to search that subject matter, I have to put it in the independent claims. That doesn’t happen all the time, but it’s obvious when it does happen. I appreciate that Examiners don’t have enough time to examine application properly, but I would really like it if Exmainers would make an effort to search for subject matter in dependent claims that seems particualrly important, or if the Applicant calls them up and asks them to search for that particular thing. This problem actually seems to be getting worse.
6 clearly misunderstands the point of REFORMING the count system. The point is not to allow Examiners to get the same exact number of counts if they continue examining exactly as they did before. The point is to change the way Examiners handle their applications so that they try to actually move cases forward rather than benefit from drawing out prosecution and milking as many RCEs as posssible. The latter strategy not only costs Applicants thousands of extra dollars, it also contributes to the backlog.
“Well guess what, we just had an interview training session where they said we should include any correspondence of an interview to be scanned into the file record.
I just heard all you dopes cringe. That’s right, let’s see how fast you guys stop filing proposed claims for interview discussion. Instead just throwing out vauge claim language throughout the interview.”
O wise Lurker, you are a little late in getting the news about the requirement. We got it weeks ago. It took us all of about 30 seconds to implement a general policy of no more written submissions for interviews.
Thanks Noise. First laugh of the day.
“But is it fair to blame PTO management?”
MaxDrei, easy one – Yes.
I infer from that rant that somebody has been neglecting to keep PTO infrastructure in good nick. But is it fair to blame PTO management? It was merely following what the economists prescribed, no?
Compare the relative state of railway infrastructure, in England and Germany. It wasn’t always like it is today. Nobody’s suggesting scrapping the English railway system. It is indispensible, and by now it’s anyway far less dilapidated than when Mrs Thatcher left office.
Remedial action is possible. Where there’s a will, there’s a way. My recommendation (it goes without saying) would be simply to adopt, wholesale, the EPO’s conscientiously maintained and diligently developed subject matter classification system. It is after all based on something called the “international” s-m classn system.
England can continue to drive on the left while the rest of Europe drives on the right. But, in patent searching, the customers demand from Patent Offices more efficiency than that, don’t they?
What needs to be done to improve the classification system? How about dividing huge classes that can’t be machine searched into much smaller ones that are manageable to hand search in the time allotted? If you can’t do a word or phrase search on some concept then computer searching is pretty effing worthless. I worked in the chemical arts and given the broad way chemical structures are drawn any number of actual compounds could meet them, just as any number of synonyms could be invented for the application under consideration since applicants can be their own lexicographers despite the perfectly good words already in the art. If you can’t do the search and examination in the time allotted then you’re blamed for it, not the system, regardless of how effed up the system is, how obsolete it’s become. It would also help if the TQASs training supervisory examiners were actually correct on the facts. I had one try to tell me something completely incorrect about what constituted a valid 102/103 inherency rejection; same one tried to tell me that if I had prior art that disclosed several Markush groups I should only make rejections over one or two of them, then save the rest of them for another Office action instead of do “compact prosecution” and make all valid rejections the first time. This appeared to be PTO management doctrine at the time. How’s that for examiners being screwed by PTO management? Doesn’t help the applicants either since they have to put up with that dung, but do they ever really get in the faces of the fools running that place? No, that would be rocking the boat. Some boats need to be sunk; this is one of them.
You did not miss anything – EVERY case on an examiner’s amended docket will now only receive .75 counts for the disposal. the transition cost for some folks will negate any benefit for the next year. – and after that, do you trust that the more time part for new cases will continue?
So a ‘yes’ vote may well mean a permanent decrease in time by allowing M to forevermore grant less counts for RCEs (over which exrs often have no control). If they really wanted to incentivize us, they would have granted more time or partial counts for the first case, and not taken counts away from the RCEs.
SPQR: You may have undercounted. Everything on your Rejected tab (except restrictions) is in a status between FAOM and disposal, and will thus receive only 0.75 counts upon disposal, even though they only got 1 count for FAOM. Add in to that all the non-RCE amendments on your Regular Amended tab.
For me, that’s somewhere in the 60s if my docket looks similar in January to how it does today, which means 15+ fewer counts over the rest of the FY or so.
That actually seems so crushing and so farfetched that I have trouble believing it myself. Maybe there’s something about this that I missed – if so, I hope someone will correct me.
MaxDrei,
The USPTO does not have anything equivalent to the EPO’s Rule 137(4). Applicant can and often do bring in stuff that was not covered in the initial search. I’ve even had cases where they bring in limitations that were incorporated by reference from a related case, but was not directly written out in the specification of the application being examined.
Update — from the Memorandum of Agreement:
“Item 8.G. – Transition Issues
Pending applications for which FAOM credit was received uner the previous count system will have 0.75 counts available, even if a final rejection has been issued under the previous count system.”
This provision cheats me out of 4 counts for no good reason, I have 16 cases in this status at the present time.
If the Office wanted to be fair about this, they could give me an extra 0.25 counts for every case in this status, and then I wouldn’t mind only getting 0.75 for the disposal. It’s a simple accounting procedure, PALM has all the data.
It’s simply a “gift” of 0.25 counts to the Office for every case in this status from every examiner.
This is unacceptable.
I won’t be voting for the proposal for this reason alone.
From slide 8, I see the following:
————-
Examiner FY09 %
Mix of Reg FAOMs –
1st RCE FAOMs –
2nd+ RCE FAOMs
73 – 20.3 – 6.8
(Approx. Corps Avg)
————–
or about 27% FAOM counts from RCEs
xephay, which slide has that 73% RCEs you referred to above?
anon,
Based on input from several other examiners in my AU, plus a couple in related EE/Computer AUs, this morning and last Friday, my numbers are pretty much “average”. Half of them have lower percentage of “regular” (non-RCE) cases (single digit and 30’s) and the other half is mostly in the 50s. All have numbers way below “Corps Avg” of 73 shown on the slides, by double-digit differences.
Not speaking for others, I always try to do a thorough search and cite the best art available on the very first office action. (I’m known among those who know me as one of the few examiners who also cite multiple rejections with different prior art references.)
Sorry to say, but your accusation is completely devoid of logic.
Thanks former examiner.
Oh how professional bureaucrats have such a hard time seeing the big picture. Tell me why this examiner (xephay) has about twice the average RCE rate. Why doesn’t everybody? This is a huge difference. 25% seems like a fair number of counts from RCE, but 50% seems ridiculous.
former examiner, my idol’s point is fully understood. I admire his courage for asserting conclusively that the guy/gal’s able to obtain high number of RCEs because his/her initial search is minimal, or as you put it, not having cited relevant art up front (in the first office action). All practitioners should learn from this great reasoning skill.
Reminds me of the EPO, where only one search is done, right at the front end of the process.
But do the USPTO rules have a counterpart to Rule 137(4) in the EPO (which provides that amendments may not relate to unsearched subject matter)? But for this rule, Applicants cheat the guillotine by amending after the PTO search issues, to subject matter not adequately covered by the search activity thus far. Absent some mechanism like Rule 137(4), I imagine the possible consequences to include i) unsearched subject matter going through to issue and ii) Applicants putting all the blame for their lack of progress to issue on the bolshie behaviour of haplessUSPTO Examiners.
All goes to show how hazardous it is, to cherry pick from another culture without at the same time adopting all the checks and balances of that other culture. Three cheers for globalization.
anon is my idol, I believe anon’s point is to make it to disposal in an efficient way, whether that be an abandonment or allowance. An amendment made during the first or second RCE or a decision to abandon could have been made after first action if relevant art cited later is brought to the front of the process. This is precisely why more hours are being shifted from the RCEs to the FAOM part of the timeline.
xephay, you still don’t get it. Again, take a look at the mirror (i.e., your statistics) and let’s talk. Why is your rate of RCEs nearly twice that of the average examiner? Could your initial search only be a “bare minimum” effort to address the claims? Seems like it to me. The office is trying to address this deficiency so that you perform your job in a more efficient manner. Cheers to them!
——–
Anon’s absolutely right, xephay! Isn’t it obvious that all your office actions are just a piece of scrap, judging purely based on the number of RCEs you received?! You should have tried to conform to the Office’s average, or better yet, keep your RCE count low by quickly issuing Notices of Allowance. Don’t force us into filing RCEs, dude! (You’re a dude, right?) Or follow your fella examiner here, who has only 8% RCEs–isn’t he doin’ wonderfully: “I barely made 95% for this past quarter, and my fiscal year production is far below what is acceptable. My trainer and then my SPE have been stressing for me to improve my production numbers.”?
link to just-n-examiner.livejournal.com
xephay, you still don’t get it. Again, take a look at the mirror (i.e., your statistics) and let’s talk. Why is your rate of RCEs nearly twice that of the average examiner? Could your initial search only be a “bare minimum” effort to address the claims? Seems like it to me. The office is trying to address this deficiency so that you perform your job in a more efficient manner. Cheers to them!
——–
just a thought to keep in mind – the “average” RCE/normal FAOM rate in the office is heavily skewed by the massive number of junior examiners hired in the last 2-3 years, and the relatively low number of senior/primary examiners – obviously all of the new examiners are going to have almost entirely regular FAOM’s and substantially fewer RCE FAOM’s – with the thousand or so examiners hired each year for the past 3 years, thats a bit hit to the “average”
“Early in my examination career, I use to put in my office action a discussion of why certain art were cited, but not used. For example, reference x was cited because it shows y (y being something from the spec that I suspected was very likely to be claimed later). I stopped doing this because despite this discussion in my office action, the very next amendment I get would sometimes be the addition of element y into the independent claims. All I’d have to do then is do a 103 rejection with reference x as a secondary which shows y.”
That sht right there is annoying isn’t it? You bust your arse doing a good job and the attorney just says to himself “o well that looks like a good amendment around the current art” and makes it and goes home. I even have attorney/agent friends who say to my face that’s what they’ll do (at least sometimes) when in a hurry. Especially for big clients that don’t care. And I have a lot of “big client” applications.
back to the proposed new count system-
the documents examiners need to review appear to now be posted on popa.org.
looks complex -and inequitable at times, since two examiners in same docket can (likely will) have different amounts of examining time based on their previous RCE mix- those with the most RCEs get the most time in the new plan in order to assure they get the “1 hour” minimum more time, whereas those exrs with the least RCEs will get a lesser adjustment.
But perhaps inequity in examining time within a docket is ok since everyone gets more time based on their own stats? certainly many would say that there is much inequity in the current system anyways. the examiner vote will be interesting