Patent Examiner Experience Levels

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The US Patent Office has announced a “targeted effort to recruit patent examiners.” In particular, the Office is hoping to lure former examiners back to the office with the hope that experienced examiners can hit the job running with only a minimal amount of training.  However, time-saving and efficiency are only part of the story.

As indicated in the graph above the percentage of patent examiners with fewer than three years of examining experience is at its highest level in recent memory.  Almost 80% of patent examiners have fewer than three years examining experience.  Less than 10% of the examiners have been working at the office for more than 10 years.  In addition to efficiency, the overwhelming number of neophites threatens the professionalism and tradition of the Office. My hope is that the new hires will be leaders in the Office in addition to their role as more efficient examiners.

The drop in the percentage of experienced examiners (10+ years) from 20% to 7% over fiscal years 2004–2009 has two components. First, the absolute number of these experienced examiners dropped from 750+ to just over 400 based on attrition. At the same time, the total number of examiner rose from 3900 to 6500.  The PTO is hopeful that some of these 350 examiners who left the office during the Dudas regime will now return.

104 thoughts on “Patent Examiner Experience Levels

  1. “Boss12, what’s rule 109(b,c)?”

    Edwin,

    Rule 109 is like Boss 12′s form paragraphs: he made it up himself.

    BWWWAAAAAHHHHHHHHAAAAAAAAHHHHHHHHHHAAAAAAAAHHHHHHHHAAAAAAAAAA

  2. “I notice in some cases that I take over that there is so much legal smoke that is used to try and confuse the examiner.”

    Bingo. What you describe is a significant majority of the Applicant’s Responses that I read. (I can’t believe that your clients pay you for these Mickey Mouse, cut-and-paste arguments. I suppose your clients don’t review your work.)

    Although, such BS makes my job easier in that I simply flush these arguments and note that they do not comply with Rule 109(b) and/or (c).

  3. It has been shown by the CBO(?) that the PTO cannot hire itself out of the backlog dilemma. It must reduce the attrition rate and vastly improve the productivity of examiners. Clearly lacking in the PTO’s approach is management effectiveness and management quality. Therefore, the sole focus on hiring and experience level of the examination staff is pointless.

    What the PTO needs to do is to completely revamp its training methods for patent examination. Perhaps someone with inside experience can provide more insight, but my impression is that it is based on a trial and error process, where the most feedback given is negative, and where the most time and effort is wasted on repeating the same mistakes in each TC, and correcting basic mistakes over and over again. In short, it is a wasteful and ineffective method, because it does not seek to analyze and improve the skills required for examination.

    What I propose is that the examination process be divided into individual steps, or tasks, and that each examiner then rotate, or advance, through the tasks after obtaining repetitive practice in each area.

    A first task would be in receiving a new application, analyzing the claims, and coming up with search terms. Each task should be done for several dozen cases, with feedback and analysis to sharpen this skill.

    Another task would be to analyze specification, drawings and claims, for formal errors.

    Next, is to take the search terms and look for prior art. This tasks stops when the best prior art is found. The prior art can be categorized as 102/103 prior art, and the relevant portions cited.

    A further task would be to take the found prior art, and formulate a draft rejection against the claims, based on the categorized subject matter.

    Finally, a review of the draft rejection to create the final office action is the last step.

    Once an examiner has gone through this procedure, they may advance to performing certain, or all, tasks on their own examination docket, and may continue to devote a portion of their time to training, by participating in the review process.

    Notice that each of these steps can have a feedback if the quality level is below an acceptable threshold. Also notice how such a system can provide for quantative metrics, performance *and* quality, to evaluate performance.

    IMHO, if the PTO implemented such a training system, they would be able to train and continuously improve their Examination staff, increase their productivity, improve their quality, decrease their backlog, and massively reduce costs.

  4. IANAE,

    The first link provides the search page at the uspto and the first hit there has the data for FY08 at slide 7. The data is 1211 hires and 583 attritions. The second link has FY09 data which indicates about 600 new hires. Accordingly, for FY08 it is total hires and I believe that FY09 is total hires as well. I will search more and see it FY07 is there as well.

    link to usasearch.gov

    link to uspto.gov

  5. Have you got a link to the data?

    If those are net hires the numbers still kind of add up. If they are total hires, you’ve got a point.

  6. From the data on the uspto website about 1200 were hired in FY08 and about 600 in FY09. I don’t have the FY07 data, but seem to remember that it was about 1200 as well, i.e., it was not 3000.

  7. the office did not hire 4800 examiners in the last three years.

    How did you come to that conclusion?

    If you’re subtracting the number of examiners then from the number of examiners now, don’t forget the ~1800 examiners worth of “attrition” over that period.

  8. If 80% of examiners have less than 3 years of experience that equals about 4800 examiners, but the office did not hire 4800 examiners in the last three years. Am I missing something or is the graph incorrect? Sorry if someone already posted this, but I did not go through the other postings.

  9. IANEA To be fair, that’s a pretty big simplifying assumption.

    Yes, that’s why I stated it explicitly. On the other hand, I would predict that even if you correct for the above-mentioned variables, you still won’t find a drop in pendency during those years I mentioned where the ratio of 10+ : <3yr is high.

  10. Ignoring the increase in filings and total number of examiners for the moment,

    To be fair, that’s a pretty big simplifying assumption.

    How about “controlling for the increase in filings and total number of examiners”? I bet Dennis could whip you up an instructive graph in no time. He’s great at that.

  11. Ignoring the increase in filings and total number of examiners for the moment, if one assumes a simple relationship between the experience level of the examining corp and “efficiency”, one would expect that application pendency would be lowest in the 2004-2007 time period.

    That’s not the way I remember it.

  12. Malcolm,

    Please do not take my quote out of context – you need to add the Law part – D’Oh! Try reading what I actually said. M’k?

    Preacher,

    I’m sure Malcolm knew that – he was just testing you (or maybe he was testing IANAE?). His “I didn’t think there was such a requirement.” was so obviously tongue-in-cheek.

  13. Preacher, key elements that de-tooth that section include “as nearly as practicable” and “if not apparent”. Any examiner can claim that they satisfied that passage by claiming that they did designate the art relied on as nearly as practicable, and the pertinence of each reference was facially apparent.

  14. “That’s not the way I remember it.”

    Mooney, I’m surprised you remember anything, what with your long history of crack abuse…

  15. “I would appreciate it if the examiner who actually has his name on the rejection could give me some indication of why the rejection is being made”

    Apparently so does the Office and the Rules. See MPEP 706 and 37 CFR 1.104

    Nature of examination.
    *****

    (c) Rejection of claims.

    (2) In rejecting claims for want of novelty or for obviousness, the examiner must cite the best references at his or her command. When a reference is complex or shows or describes inventions other than that claimed by the applicant, the particular part relied on must be designated as nearly as practicable. The pertinence of each reference, if not apparent, must be clearly explained and each rejected claim specified.

    It would be nice if every Examiner understood and followed this Rule.

    As usual all of the so-called “problems with the Patent Office” could be fixed, not with “reform,” but simply by following the rules that are already in place.

  16. “Keep it real”

    Excellent advice – and taken in what I presume to be a constructive manner.

    I offer the same advice in return.

    Keep in mind that these message boards are NOT my client’s applications being argued. I do make a point of remaining pleasant and civil in my actual responses – although I do not beat around the bush where errors need to be corrected. I do realize that honey catches more flies than vinegar – but make no assumption that the errors in law are readily recognized (had they been, they would not have been made in the first place).

    These message boards are different. Here, strong advocacy and occasional bluntness work the best. It is not my desire to win best personality – it is my desire to clearly champion the causes of Law. Keeping it real on the message boards means that ideal world arguments are NOT taken as fact and improper examination and other Office improprieties are challenged. Make no doubt – my challenges here on the message boards are the easy path – Kudos to those like Dr. Tafas that challenge in the “real world” where real dollars are expended.

    As to profession (and professional) – I would echo the comments of Mr. Hobbes, and would merely deign to add that if the examiners (read that as POPA) understood and held fast to their true importance, Professionalism in the Office would not be merely some ideal goal, divorced from the reality that we have.

    I would call that Getting it Real – as opposed to keeping it real. But that’s just me and how I view my profession.

  17. “You may have been called to the bar somewhere, but that doesn’t mean being a lawyer is your profession. When you practice before the PTO you have the same profession as all the non-lawyers who do the same. Your title may be “patent attorney”, if it makes you feel more important, but your profession is “patent agent” and your goal is getting patents for your clients.”

    Would I be incorrect in thinking that it is truly a sad day when the responsibilities, privileges, and prestige associated with being a duly appointed member of the patent bar are called into question, nay, implicitly besmirched, on no less than the world’s leading patent-related blog?

  18. You do need to explain that the fact of not having all elements means that the examiner’s rejection is NOT correct as a matter of law.

    No, the examiner knows that one already. You need to show that not all the elements are there, and add a sentence at the end saying “since all the elements are not there, please withdraw your rejection”.

    Being overly legalistic on such a fundamental point, coupled with “Funny thing about facts – I can turn them whatever way I want”, will get examiners taking a personal dislike to you. In the real world, where examiners are actual human beings who stand between your client and his patent (i.e. not your ideal world where examiners are legal experts who defer to your overwhelming rightness), that can only work to your detriment.

    perhaps the rest of us would appreciate the respect that being “so very much a lawyer” should have – after all – it’s our profession (well, at least mine).

    You may have been called to the bar somewhere, but that doesn’t mean being a lawyer is your profession. When you practice before the PTO you have the same profession as all the non-lawyers who do the same. Your title may be “patent attorney”, if it makes you feel more important, but your profession is “patent agent” and your goal is getting patents for your clients.

    Keep it real.

  19. I wrote: Seriously, though, is there a requirement for the signing Examiner to be able to personally explain, in detail, every rejection in an Office Action where that Office Action was the work of a team?

    And IANEA wrote: nobody is holding anybody to that standard.

    So the answer is : “No, there is no such requirement.”

    Thank you. That’s all I was asking. I didn’t think there was such a requirement.

  20. “…they tend to stand or fall on their own.”

    Funny thing about facts – I can turn them whatever way I want – so I would disagree on your premise – you do need both law and facts. You do need to explain that the fact of not having all elements means that the examiner’s rejection is NOT correct as a matter of law.

    Perhaps we have reached a point of semantics – or perhaps this is another of the unstated assumptions of your posts (like the ideal world), and perhaps the rest of us would appreciate the respect that being “so very much a lawyer” should have – after all – it’s our profession (well, at least mine).

  21. Facts alone are not enough in a response – you must show why the law supports your understanding of the facts.

    Funny thing about facts – they tend to stand or fall on their own. Not many laws can stand in the way of a really good fact for very long.

    You don’t need the law to make a point of fact. You don’t need the law to explain to the examiner why he hasn’t found all the elements of your claim in his cited art.

    Plus, the examiner probably thinks you’re a jerk for citing law when you don’t have to. You could look at it as part of the price of being a lawyer, but the rest of us would appreciate it if you weren’t so very much of a lawyer.

  22. “Your every response should be anchored in your claims and how they differ from the prior art.”

    That goes without saying. (just like your propensity to post in some idealistic world – leaving the general readership to wonder about the veracity of their contents – don’t worry – I get your style now – but it is difficult sometimes to distinguish where (or if) you recognize the actual world/ideal world line is).

    Nonetheless – the claims are rejected over the prior art only to the point that the law allows – (for example, the examiner making a prima facia case). Facts alone are not enough in a response – you must show why the law supports your understanding of the facts. While neither law nor facts are enough separately, all responses are based in law. (Ten pages for a single point of law is WAY too much – if it takes me that long, I have to question whether I know the law at hand. Of course, applying the law to the facts at hand does take time and space….)

    As to the MPEP – to me, it is next to useless. Yeah sure, in the ideal world the examiners would actually take “guidance” to mean something other than “not forced to listen”, but I operate in the real world, not in your ideal world.

  23. EVERY response of mine is anchored in law. Every single one.

    Every time I cross the street at an intersection, it’s “anchored in law”. The time I choose to cross is based on a point of law. That doesn’t mean I need a profound understanding of the law to know (or convince others) that I’m doing it right.

    Your every response should be anchored in your claims and how they differ from the prior art.

    The MPEP doesn’t carry the same force of law

    Of course it doesn’t. I’m not saying it does. I’m saying it should reflect the law as accurately as possible (not a controversial stance, I hope), and it should be complete enough for examiners to deal with the overwhelming majority of cases they examine.

    I mean, of course they’re going to be at a loss when dealing with some attorney who would rather argue the law for ten pages than point out why his claims are non-obvious, but it’s not like that happens all the time.

  24. IANAE,

    “How often do you really need to argue the law in your prosecution practice? How often does your argument really turn on the examiner having the law wrong?”

    How often do you respond to an Office Action and NOT base that response on a point of law? EVERY response of mine is anchored in law. Every single one.

    “…and even that shouldn’t take more than the MPEP.”

    The MPEP doesn’t carry the same force of law – haven’t you seen the number of posts here at the trainwreck where examiners simply violate the MPEP because in their view it is only guidance? Even the Office is in the habit of announcing an update to the MPEP with a milquetoast “this is guidance only” proclamation.
    I am not saying that they shouldn’t follow it – as an administrative law issue, I am saying that quoting Law is simply more effective.

  25. ooooh, a hoteling examiner, start playing the violins! Excuse me, I have to leave now and finish the application I’ve been working on all weekend between shoveling snow.

  26. I meant to add that examiners should generally not pay much attention to legal arguments unless they are tied to the facts of the case. They should trust the MPEP, and the MPEP should be kept reasonably up to date. If the PTO has a bunch of lawyers sitting around for arguing with legalistic applicants, I’d rather they give them some applications to examine.

    On the rare occasion that an applicant really does need to make an intricate legal argument, … well, I guess we still need to fix the appeal process.

  27. and then IANAE takes a 180

    [citation needed]

    (sidenote: I’m not suggesting that they get rid of hoteling; it’s one of the primary reasons that people stay at the PTO)

    If their primary way of keeping people at the PTO is “you don’t have to go to the PTO”, they need to think harder.

    Seriously, though, is there a requirement for the signing Examiner to be able to personally explain, in detail, every rejection in an Office Action where that Office Action was the work of a team?

    Again, nobody is holding anybody to that standard. I simply want any examiner who makes a rejection to be able to articulate a general and coherent rationale for the rejection, in a way that sort of makes sense to another person who is trained to do the same. Particularly if the junior is signing his name to the rejection.

    In fact, I think that the Office should be focused on making an examiner’s job easier and one of those ways would be to use attorneys to fight the attorneys.

    I think that’s entirely the wrong approach. Most rejections are based on what the art teaches and what the claim covers, and most applicant arguments and amendments should be based on what the art teaches and what the claim covers. It should be very rare that you’d ever need to include a lot of law in your OA response, unless the examiner has the 103 standard completely wrong or something, and even that shouldn’t take more than the MPEP.

    How often do you really need to argue the law in your prosecution practice? How often does your argument really turn on the examiner having the law wrong?

  28. “use attorneys to fight the attorneys”

    That’s an interesting idea. There are certainly applicants whose M.O. seems to be to throw as much stuff at examiners as possible to overload them.

  29. In fact, I think that the Office should be focused on making an examiner’s job easier and one of those ways would be to use attorneys to fight the attorneys.

    I notice in some cases that I take over that there is so much legal smoke that is used to try and confuse the examiner. There should be a group at the Office that does nothing but sort through legal nonsense and categorize it as legal nonsense so that the examiner’s don’t have to figure it out themselves.

  30. >>Sorry NWPA, but if the examiner uses a legal >>argument against me – he better understand it.

    Examiners should be able to rely on the Office’s help. That means attorneys at the PTO, SPE, primaries, etc. When I worked for a big corporation I had to rely on many others with far more experience than I had for parts of my job. That is one of the great benefits of a large organization.

    There is nothing wrong with an examiner getting the help of a SPE or someone else as long as we have a recourse to speak with or interact with that person too.

  31. an rc cola and a moonpie: hoteling examiners should be paid less

    Hoteling examiners have to work today, whereas the rest have the day off due to the blizzard Saturday. Including last Friday, and the last snowstorm, that’s 2.5 days (2-3 counts depending on one’s level and art unit) they have to work when others get to relax at home, dine out, or go shopping.

  32. maybe there actually should be fewer SPE’s, just more senior examiners who examine more cases and more difficult cases and mentor/train junior examiners — but get paid at SPE rates???

  33. Will: I rather do enjoy caramels, come to think of it. They might pull out my fillings though.

    Scrapple, yes, of course I get “other time” for helping out, but not every SPE is so generous (as pointed out above). Also, there is only so much non-examining time that one can absorb, at some point it prevents you from doing your own work in a timely manner. And as we all know, Workflow is a PAP element and time spent training is not. Just sitting in your office, locking the door, and examining cases is arguably “easy” but constantly verbally articulating explanations of search strategy, the law, the art, claim interpretation, etc. to someone that’s been there three months, well, I think that work is harder. And did I mention that people hand you a set of claims and expect instant answers? Someguy had it right: examiners, before you seek help, take the initative and make a good effort to educate yourself. It helps everybody out.

  34. Scrapple, I helped examiners all day long and my stinkin SPE Olik gave me no time at all. Still got my production, and more, too!

  35. I would ask people to think of ideas and submit them to Director Kappos. I am convinced that most people leave the PTO because working under a production quota: a) is stressful, b) doesn’t foster a professional environment, c) isn’t conducive to training and d) doesn’t foster esprit de corps, among other things.

    ————-

    I do not like saying this, because I once was very optimistic about things, but I have personally found this a complete waste of time. The PTO is not interested in your ideas because they would not be their own.

  36. Hotellers shouldn’t be paid less, and in office primaries shouldn’t be paid more. Primaries that help junior examiners should (and do) get non-examining time for helping out.

    RC is right about SPEs becoming SPEs to get off of production though. I don’t blame them, the production system is miserable.

  37. “Their SPEs should take cases that are extremely complicated in regard to legal arguments.”

    Hee hee hee. That made me lol. SPEs know didlysquat about the law, and would never “work” on a case again. That is the reason they became SPEs!

  38. However, the hoteling primaries (from what I have seen) do not pull their weight. I should be paid more for what I do, relative to a non-training and self-isolated primary examiner. Hotellers, PLEASE, if an examiner contacts you for help, please help them instead of passing the buck to others. Thank you. Everybody needs to help out here. We truly have limited resources.

    -Primary No. 9

    ————-

    Thank you Primary No. 9! I mentioned this about a month ago (about why hoteling examiners should be paid less than someone like yourself (and me, when I was a primary there)).

  39. “Hey someguy, I think we should go grab a coffee sometime, I think you and I would have a lot to talk about…”

    Why not get together and eat a bunch of caramels?

  40. Guess what, training wasn’t all that great even when there were oodles of primaries. I started at the PTO in 1986 and the person who was training me sent me on all kinds of wild goose chases. A good example- I had a patent application for a sonar dome for the bottom of a ship (misclassified as I was working in “stock materials” so that’s a whole other story). It was three or four layers of rubber. The claims read “an acoustic window” and this guy, over my strong protests, sent me to do a mandatory search in building materials for, you guessed it, a window. I tried to explain to him that it was terribly difficult to see through all that rubber and so house windows would not be a fruitful search. But, not to be insubordinate, I dutifully went to a primary in the building materials art and got him to write a note in the file that there was NO search there (this was the days of no computers so you had to walk to another building to do a manual search…yup, the good old days). So on my own I found and went to where sonar domes were classified, found plenty of art, sent out my Office action and then lost the case when someone decided it really belonged in the security group (I had said it was misclassified from the beginning, no one listened).

    After three months of this BS, I wangled a transfer to an art unit with art that I had worked on in the lab so I didn’t need any “help” from the “expert” primaries.

    And looking at the people in a lot of management positions (a lot of whom I am all too familiar with) I am not surprised things have not improved.

    The Office actions I get now have so much juxtaposition of things cut and pasted from my claims and the references that they are pretty much unreadable- is there now some requirement that every Office action be 10 pages? Every now and then I get an action from a senior person whom I know and they get it done in about 3 pages and much more clearly. Sigh.

    I do think about going back (family reasons) but I am not sure if I would be driven nuts by lots of nit-picky rules or having my stuff reviewed by “quality assurance” people who don’t even come from that art. I would like to train junior examiners (I have trained lots of junior people on the outside who knew very little about patent law) but not sure I understand today’s PTO. The main thing I would tell junior examiners is that the phone is your friend- call the attorney and “make a deal” with a happy ending and an Examiner’s amendment you all can live with. People are much easier to deal with on the phone and you can make a lot of progress and avoid endless RCEs, etc. It took me about 3 years to learn this as an examiner and after that, well I made a lot of good allowances. Sorry for the long post.

  41. Hey someguy, I think we should go grab a coffee sometime, I think you and I would have a lot to talk about…

    Also, I’m with you on the SPE thing. You couldn’t pay me enough to take that job right now.

  42. As a junior examiner, I agree with pretty much everything someguy said above. The question is, what do we do? I see an extraordinary amount of bad behavior that stems from the count system, so I would like to get rid of it. However, I understand that there must be some incentive to get cases done in a timely manner; otherwise, I can easily see myself searching too long. Also, many people are just lazy and won’t do the work without some sort of carrot or stick. Money alone can’t be the motivator; we already have people who turn in crappy work so that they can get a bonus.

    I would ask people to think of ideas and submit them to Director Kappos. I am convinced that most people leave the PTO because working under a production quota: a) is stressful, b) doesn’t foster a professional environment, c) isn’t conducive to training and d) doesn’t foster esprit de corps, among other things.

    My humble opinion and suggestion, respectfully submitted.

  43. “…for actually reading through the specification, doing a thorough search based on the claims and the specification, then identifying allowable subject matter from the specification….”

    I think all these things you mentioned above are the minimum/expected/required that should be done by every examiner. Anything less is slacking off on the job as an examiner.

  44. someguy, I’m not talking about doing a piss poor job, I’m talking about giving examiners an incentive to rise from average, which is all they are expected/required to do, to be at the top of their game. If an examiner is not rewarded for actually reading through the specification, doing a thorough search based on the claims and the specification, then identifying allowable subject matter from the specification, the examiner is not going to do all of this work. The examiner will look at the claims, find art, and do a rejection, thus initiating the endless cycle of rces. This isn’t a piss poor job, but this isn’t an excellent examination either.

  45. “Would you work really hard developing your skills to be at the top of your profession, even though your pay will remain the same as the primary who doesn’t care?”

    Yes. There’s a little something called professionalism. My co-worker(s) not caring and doing piss poor work and never developing his/her skills is not a valid reason for me to not do a proper job and continually develop my own skills if for no other reason than to remain marketable should I ever want to move on from the PTO.

    “Their SPEs should take cases that are extremely complicated in regard to legal arguments.”

    The only problem with the above statement and other suggestions I’ve seen here where people have stated that all managers should also be examining is that many of these SPEs are already overworked. The number of people my SPE is in charge of has doubled since I joined the PTO a little over five years ago. I see first hand the crud my SPE has to put up with on a daily basis when I help out with training and reviewing cases. It’s like babysitting. If it was up to me, I’d flat out fire half the people whose work I’ve reviewed; some of them have been at the job as long as I have or longer and they don’t even know how to do a proper 103 rejection. $130-155k/year is no where enough to convince me to ever become a SPE full time and especially no where enough to both be a SPE and maintain an examination docket.

    I have not seen any real difference between the quality of examiners coming from the training academy as opposed to pre-academy days. As such, when these new examiners get to their art unit, they have to be trained again especially with respect to claim interpretation, finding proper art, and how to make a proper rejection or determine when something is allowable and how to present their case to a primary to convince them its allowable.

    The problem is that there’s so many new examiners who have to be trained and whose work have to be reviewed that there are not enough SPEs and primaries to go around to do this properly especially given that many primaries refuse to help out. And you can’t force primaries to help junior examiners with their work or help with their training since it’s not part of their PAP. The result is you have SPE who are overworked, primaries who care enough to help out who are overworked, and junior examiners who never get trained properly due to lack of resources and unfortunately, in many cases, lack of drive on the their own part to put in some effort to learn stuff on their own.

    Many of these junior examiners think that the crud they’re sending out are good since their boss is signing it. Try convincing someone who’s been around as long as or longer than you that “it makes it better” is not a valid motivation for a 103 rejection. I’ve had to tell one or two examiners that I will no longer waste any of my time by helping them with anything or reviewing their cases because they refuse to believe their OA is crud and get an attitude about it when I refuse to just sign off on their work or proposed allowance.

    Heck even before the training academy and the PTO’s hiring binge, there was not enough resources to go around to properly train new examiners. When I joined, there was no primary examiner in my art unit. My SPE was not familiar with the art, so my SPE often sent me to primaries in other art units for help, who often turned right around and told me to talk to my SPE since it was their job to train me or to talk to some other primary equally as unwilling to help.

    The majority of my training came from my own efforts–reading the MPEP, looking up and reading case laws, reading patent blogs like this one, and reading Office actions from other examiners. The problem with the last one was that being new, I thought that everyone who had been around for 3+ years knew what they were doing and the stuff I was learning from their Office actions were valid. How quickly I learned that to not be the case.

  46. “Now when I have a conversation with a government employee in the park…”

    Oh, to be a fly on a park bench…

  47. By the way, now I’ve seen it all: accusing the federal government of incompetence for being located in Washington DC.

  48. NAL, we are all aware that there is only room for one cold empty marriage in your heart, that being of course your marriage to THE LAW.

  49. Three years ago I chose to enter the field as a consultant (working for an expert witness) instead of as an examiner, on the other coast… These conversations typically veer into sniping about bureaucratic jargon which reinforces my decision not to join the PTO.

    Continuous exposure to patents which should never have been granted hasn’t helped…

  50. Snow Day writes:
    Let’s not forget that about half of the experienced people are working from home, where they are less accessible to us n00bs. That has the added effect of increasing demand on the experienced people who are still in the office, making it harder for examiners to get help.

    Ah, but this is the jillion dollar question: How does the Office train all of these new examiners to do quality work? As one of said less than 10% of examiners who has more than 10 years of experience (AND who works on campus), about 30-40% of my job now involves supervisory duties. I answer dozens of questions each biweek from junior examiners. I don’t blame them for seeking help. However, the hoteling primaries (from what I have seen) do not pull their weight. I should be paid more for what I do, relative to a non-training and self-isolated primary examiner. Hotellers, PLEASE, if an examiner contacts you for help, please help them instead of passing the buck to others. Thank you. Everybody needs to help out here. We truly have limited resources.

  51. NAL: I see that this also will kill the third grade level rumors about NWPA and I.

    Yes, everyone was talking about those rumors.

  52. “Just fyi, NAL: you may want to proofread your comments if your sub-conscious thoughts continue to creep into them. Although I’m sure they are fascinating.”

    Just fyi Malcolm, my thoughts and the rest of the post are not only fascinating, but spot on. (hmm, Malcolm’s call to proofread seems to indicate an error where there is none – he must be up to his obfuscation tricks as usual). I see that this also will kill the third grade level rumors about NWPA and I. – Sorry NWPA, but if the examiner uses a legal argument against me – he better understand it.

    As far as signing work you understand – why am I not surprised that Malcolm sees no problem in putting his name to something he cannot explain?

    Of course, in Malcolm’s case, he does understand the content to which he signs his name – we know he answers all questions. It’s just a shame that those answers are fluff and misdirection, lacking substantive value. But hey – Malcolm understands that his answers are fluff and misdirection lacking substantive value so he’s covered here – at least on the technicalities.
    (uhoh, Malcolm’s exposed again – must be time for his ever so witty Troll comeback – or some other equally banal response).

  53. The single biggest indicator to me of how poorly the PTO is managed is its location. Examiners are or should be basically engineers. No engineering company would put a facility smack in the middle of one of the most expensive cities in the country. Such a pitifully terrible decision that the whole company would go bankrupt if it were a private company. Graceous, 6,000 engineers making what 70k on average. Almost any medium small town would kill for a facility like that. And the examiners would all be making enough for a nice house. That single decision illustrates just how utterly terrible the PTO is.

    By the way, MM is right that examiners should not have to understand complicated legal arguments. Their SPEs should take cases that are extremely complicated in regard to legal arguments.

  54. Trying to snow them: >>Ask NWPA.

    Snow, that isn’t what I said. What I said was that the private sector is losing ground whilst government employees are gaining ground. That is a sea change. In the 1980′s the government employees suffered along with the middle class. Now when I have a conversation with a government employee in the park they seem to be oblivious to the problems in the private sector. As if it is our problem and not theirs. The government employees should all take a 10 percent cut in pay. You should suffer with us.

  55. But sadly, dark knight, unlike the NBA, the good primary Kobe Bryant gets paid the same as the primary that doesn’t care Eddy Curry. So if you are a primary examiner and you get paid the same regardless of whether you are Kobe or Eddy, what would you do? Would you work really hard developing your skills to be at the top of your profession, even though your pay will remain the same as the primary who doesn’t care?

    The only way talented examiners will care enough to take their game to the next level is if the PTO rewards them for doing so.

  56. The recession is probably a good thing for the office. The early stages got people to consider the PTO that might not otherwise would have and the continuing slump forced some people to stay here that might otherwise have left. My opinion is that there are a range of examiners at the office at all levels. The PTO is just like the NBA (but with less passing). With little help some examiners will have good careers. Others, no how good their coaching is won’t put the ball in the basket and will foul out in 10 minutes (not within their skill set to properly reject claims their SPE tells them to).
    Good primary: Kobe Bryant
    Over the hill primary: Jermaine O’Neal
    Primary that doesn’t care: Eddy Curry/Vince Carter
    Good young examiner: Kevin Durant
    Non-primary after 10 years: Jeff Foster
    Examiner with bad attitude: Stephen Jackson
    Young examiner with upside: Anthony Randolph
    Clueless examiner: DeSagana Diop
    Good SPE: Phil Jackson
    Bad SPE: Kiki Vandeweghe (Nets coach)

  57. Mooney “But it seems that an experienced Examiner (e.g., and SPE) would be more likely to know if something is there or not than a Junior Examiner.”

    Mooney, it is becoming more and more rare to have a SPE that even has a background in the same general field, let alone one that knows our art.

  58. Curious, it’s because they were overpaid and underworked, so they left to find a job where they got paid less and worked harder. Ask NWPA.

  59. NAL: then IANAE takes a 180….(was that prompted by my assailing…?)

    [with slight echo] ~~That’s funny, my husband never drinks a second cup at home.~~

    Just fyi, NAL: you may want to proofread your comments if your sub-conscious thoughts continue to creep into them. Although I’m sure they are fascinating.

  60. NAL: It is not asking anything more than what is required – if you are going to use something against the applicant, you better damm be able to explain it.

    LOL. In perfect English with correct pronunciation, right?

    Seriously, though, is there a requirement for the signing Examiner to be able to personally explain, in detail, every rejection in an Office Action where that Office Action was the work of a team? There may be one, I suppose. I’m just not aware of it.

    As I said, I’ve occasionally called the Examiner to ask for clarification of a rejection and was referred by the Examiner to the Examiner’s SPE or a TQAS. I didn’t mind the referral at all. On the contrary, I was glad to get to know who those individuals were and the nature of their expertise. I’ve subsequently called them to discuss other fact patterns that were unrelated to specific rejections in an Office Action.

  61. Let’s not forget that about half of the experienced people are working from home, where they are less accessible to us n00bs. That has the added effect of increasing demand on the experienced people who are still in the office, making it harder for examiners to get help.

    (sidenote: I’m not suggesting that they get rid of hoteling; it’s one of the primary reasons that people stay at the PTO)

  62. Re:
    “Some junior examiners are stuck writing rejections for claims they know they don’t have the art for because their primary or SPE tells them to.”

    As I read this comment, I was prompted to think that the “malcolmy” response would be:

    Prove it – numbers please.

    – I see that Snow Day picked up on this line of thinking as well: “(no, I’m not going to name names; no, my refusal does not indicate that I do not know some names).”

    Intersting that IANAE’s first reaction is directly on this line of thought, The examiners who have fewer than three years experience know nothing different than the “reject-reject-reject” philosophy. [citation needed]

    and then IANAE takes a 180….(was that prompted by my assailing…?)

    Malcolm asks “Why should it be the case that *every* Examiner needs to understand *every* nuance of patent law in a manner sufficient to explain it to, e.g., a combative attorney?” and states “Seems that it’s asking a lot of these people.”

    It is not asking anything more than what is required – if you are going to use something against the applicant, you better damm be able to explain it. As to why – maybe because the examiner signed his name to it—– D’Oh!

    Funny how Malcolm seems all concerned with appropriate Office resource use – (methinks a burr exists in how Malcolm is tasked at the Office). As to “…the goal is use resources efficiently then training everyone to “cope with their own cases independently” seems to be a mistake.”

    I thought the goal of examiners was to examine – silly me.

    Malcolm’s comment of “Why is this a problem?” to the point of :the existence of SPEs that say things like “it’s got to be out there, you should be able to find it” is telling. The fact that Malcolm does not see this as a problem – is part of the problem. Maybe the context was “too vague” for Malcolm, so let’s clarify it – this statement implies that there is NOT art out there, and that the SPE refuses to let the allowance go through – turn on your critical faculties.

  63. Plurality It’s a problem because the examiner is stuck searching (quite possibly for days) for something that isn’t there to find or is unlikely to be found by virtue of the particular limitation at hand.

    Yes, searching for days for something that isn’t there is a “problem” if you are given only a similar number of days to complete the entire task assigned to you. But it seems that an experienced Examiner (e.g., and SPE) would be more likely to know if something is there or not than a Junior Examiner.

    Pretty much any associate at any law firm has been asked to find that “case on point” that turns out not to be there but the partner “knew” that it must be there. It’s a “problem” but less of a problem than never looking or doing a half-axxed job and looking like a fool afterwards.

    IANEA What the PTO has right now is ~1300 examiners with 4+ years of experience and an immediate target of 7200 examiners with less. These examiners need training and useful experience wherever they can get it, and at least some of them need to be groomed to be independent and supervise others.

    Nothing inconsistent about this and a trend towards increased specialization.

  64. While there are exceptions, one of the advantages of having groups of people with tiered experiences and varying skills is to allow people to focus on what they do best.

    I would agree, in a steady-state environment. What the PTO has right now is ~1300 examiners with 4+ years of experience and an immediate target of 7200 examiners with less. These examiners need training and useful experience wherever they can get it, and at least some of them need to be groomed to be independent and supervise others. Otherwise, there will only ever be the one tier.

    That’s not to say that someone can’t be or can’t strive to be a jack-of-all-trades, but if the goal is use resources efficiently then training everyone to “cope with their own cases independently” seems to be a mistake.

    That’s not exactly what I meant. An examiner should be willing and able to ask another for help if he comes across the occasional point of law/procedure/technology he can’t handle. If you’re looking for efficient use of resources, an examiner shouldn’t need someone else looking over his shoulder for every action. Besides which, half of the most-experienced examiners left the PTO in the past 5 years. Whoever they were supervising is on their own now.

  65. “the only way you can get by at this job is by eventually learning when you’ve done a good search and when you should give up and leave it to the courts to sort out anything you missed.”

    Makes sense.

  66. It’s a problem because the examiner is stuck searching (quite possibly for days) for something that isn’t there to find or is unlikely to be found by virtue of the particular limitation at hand.

    As IANAE suggested above, that’s heck for junior examiners, because the only way you can get by at this job is by eventually learning when you’ve done a good search and when you should give up and leave it to the courts to sort out anything you missed.

    Thanks to Snow Day, by the way, for vouching for my statement. I was speaking from experience, both my own and that of my coworkers.

  67. Snow Day: There are always going to be some examiners who want to allow everything

    First time I’ve heard this assertion.

    SPEs that say things like “it’s got to be out there, you should be able to find it” do exist

    Why is this a problem?

  68. IANAE I guess it comes down to whether a supervisor’s role is to equip juniors to cope with their own cases independently, or merely to delegate the typing of whatever rejection he deems appropriate.

    I disagree. It can’t be so black and white. While there are exceptions, one of the advantages of having groups of people with tiered experiences and varying skills is to allow people to focus on what they do best. That’s not to say that someone can’t be or can’t strive to be a jack-of-all-trades, but if the goal is use resources efficiently then training everyone to “cope with their own cases independently” seems to be a mistake.

    We discuss a lot of shallow, trivial inventions here but it’s not all like that. In spite of the relative job security the field has enjoyed over the years, most lawyers avoid patents like the plague because a lot of this sh*t is incredibly complicated.

  69. Oh come on, Mooney. I’ll vouch for Plurality’s statement. There are always going to be some examiners who want to allow everything, and some examiners who think everything is obvious. Some of both varieties will inevitably become SPEs. SPEs that say things like “it’s got to be out there, you should be able to find it” do exist (no, I’m not going to name names; no, my refusal does not indicate that I do not know some names). It’s simply human nature that all SPEs cannot be uniformly reasonable.

  70. Why should it be the case that *every* Examiner needs to understand *every* nuance of patent law in a manner sufficient to explain it to, e.g., a combative attorney? Seems that it’s asking a lot of these people.

    I wouldn’t hold them to that high a standard, but I would appreciate it if the examiner who actually has his name on the rejection could give me some indication of why the rejection is being made.

    Not every junior has to fully understand every nuance of patent law, or defend it over the phone to a combative attorney, but if one arcane point crosses his desk, that may be his best chance to score some education on that point.

    Also, if the SPE can’t explain the rejection to someone who is ostensibly on his side (to a level of comprehension, not necessarily agremeent), that raises a red flag for me. I couldn’t say whether the problem lies with the junior or the SPE, but chances are there’s a problem somewhere.

    I guess it comes down to whether a supervisor’s role is to equip juniors to cope with their own cases independently, or merely to delegate the typing of whatever rejection he deems appropriate. Which I’m gonna tie back to the retention issue via employee morale, once again.

  71. I’m sure that NWPA will be along any minute now to let us know that the obvious solution to the problem of lack of examiner experience is to cut pay and increase production requirements.

    It seems, at least from my (low) experience, as you approach the three year mark, somewhere in the range of 25%-50% of the people you started with are gone. Also, from what I’ve seen, guys with PhDs are just as likely to get canned as those without, and aren’t any better at examining. (I think part of the reason is that they aren’t put in areas related to their PhD, and they’re usually older and aren’t willing to work like dogs.)

  72. IANAE If the SPE can’t explain the rejection to the satisfaction of the junior, it needs more time spent on it before it leaves the office.

    Just to add to my preceding comment, I’m not sure this universally correct. Why should it be the case that *every* Examiner needs to understand *every* nuance of patent law in a manner sufficient to explain it to, e.g., a combative attorney? Seems that it’s asking a lot of these people. Wouldn’t a better approach be to allow SPE’s and TQAS to dedicatedly handle certain issues that tend to be complex and/or arcane, just as the office employes pre-Examiners to evaluate certain formal requirements?

  73. The examiners who have fewer than three years experience know nothing different than the “reject-reject-reject” philosophy.

    Right, and Barack Obama hates white people. Your script has mold on it.

    Plurality: Some junior examiners are stuck writing rejections for claims they know they don’t have the art for because their primary or SPE tells them to.

    I doubt this is true. What is more likely true is that some junior examiners are rejecting claims as obvious because their primary or SPE tells them to, even though the junior examiner on his/her own would have a difficult time articulating why the claim is obvious.

    What I have seen on occasion are rejections/objections based on some obscure rule or under-developed area of the law, followed by an extremely truncated explanation of the alleged defect. In those instances, a follow up call with the Examiner usually reveals the guiding hand of an SPE or a TQAS. Of course, it’s easy enough to contact those individuals and obtain a more detailed explanation of the alleged defect.

    This is a shorcoming of the present system but not that big of a deal really. The effect on the system as a whole is minor compared to, say, an Examiner Interview Summary stating, e.g., “Various issues were discussed” followed by a Notice of Allowance.

  74. ” But given time (and the right supervisor), the propensity to reject everything can be unlearned.”

    and carefully placed electrodes

  75. Some junior examiners are stuck writing rejections for claims they know they don’t have the art for because their primary or SPE tells them to.

    That sort of thing can’t be awesome for retention of junior examiners.

    On at least one occasion, I’ve phoned an examiner to ask about an incomprehensible rejection. Turns out the examiner didn’t understand the rejection either, but the SPE insisted the rejection be made, which immediately explained why the rejection was so poorly written. Of course, the examiner had no idea whether any proposed amendment would overcome the rejection, since the examiner didn’t see the problem.

    If the SPE can’t explain the rejection to the satisfaction of the junior, it needs more time spent on it before it leaves the office. It’s okay for the junior to disagree with the rejection, but it should at least admit of explanation to another trained examiner. What’s more, if the rejection really is well-founded, it’s a teachable moment for the junior.

  76. “…the overwhelming number of neophites threatens the professionalism and tradition of the Office.”

    Thanks to the economic downturn, at lot of these new hires are older folks with professional experience. It may not be the frathouse atmosphere you’d expect.

  77. curious: “The examiners who have fewer than three years experience know nothing different than the “reject-reject-reject” philosophy.”

    Not necessarily true. For those examiners in or fresh out of the (currently closed) training academy, this is true, in part because these examiners are still doing lots of first actions (in which allowances are exceedingly rare), and because their trainers were likely to be unfamiliar with all of the art of their lab (because academy labs often have students destined for several different art units). Allowances aren’t really taught in the academy. But given time (and the right supervisor), the propensity to reject everything can be unlearned.

    After that period, though, the biggest factor in whether a junior examiner tries to reject things in inappropriate situations is the examiner who signs their actions. Some junior examiners are stuck writing rejections for claims they know they don’t have the art for because their primary or SPE tells them to.

  78. The examiners who have fewer than three years experience know nothing different than the “reject-reject-reject” philosophy. [citation needed]

  79. The examiners who have fewer than three years experience know nothing different than the “reject-reject-reject” philosophy.

  80. “experience” is a loaded term – I do not want any examiners “experienced” in 6-isms.

    Unlearning often is more difficult to learn.

  81. There’s an old saying that people rise to their level of incompetence. Maybe some of the best work is beng done by less experienced Examiners who move onward in order to move upward. But who knows. It’s just a saying. And even with my experience doing interviews with Examiners of varying experience levels, I still can’t judge whether there is a significant correlation between experience and quality of examination.

  82. attrition rate of about 10% each year

    Ouch. That means they’ve lost about 2500 trained examiners over a five-year period when the vast majority of the corps was relatively new hires.

    On the plus side, that’s a lot of former examiners they could recruit who wouldn’t need much more training. On the minus side, they all left for a reason, and that reason needs to be addressed.

    Part of the attrition rate is driven by the broader economy.

    People leave when they think they can do better. They don’t leave when the alternative is unemployment. Fair enough, but part of employee retention is making people feel like they already have it pretty good.

    There’s no sense in hiring and training people if half of the new hires will be gone in three years.

  83. RE Attrition Again: Part of the attrition rate is driven by the broader economy. Thus, when when the unemployment rate is high, attrition tends to be low and vice versa. Back in 2000 when unemployment was at 4%, the attrition rate was almost 14%. In the early 1980′s when unemployment was high, attrition dropped to under 5%.

  84. RE Attrition: During the years 2004-2009, the PTO has had an attrition rate of about 10% each year. In other words, each year about 10% of the examiner corps left the PTO.

  85. Thanks for the edit, Dennis.

    If 3000 new examiners were added to a corps of 3500 (3900 minus attrition in 10+) over a five-year period, there should be no more than ~45% with <3 years’ experience, and more likely close to ~30%. An 80% level suggests very high turnover, and significant attrition in the 4-9 year band that now barely exceeds 10% of the corps despite five years of rapid growth.

    Looks like the PTO will have to take a serious look at employee retention, or all this hiring activity and training time will be a waste.

  86. I’m not entirely convinced that having fewer than 3 years experience is such a bad thing. You would think those new hires would be tackling the job with a passion compared to the worn out old guys. Not to mention the younger crowd may be more proficient with search tools.

    Albeit, I can fully understand that those new examiners make more mistakes. It takes about 3 years to get acclimated to the job, but after that who knows if the examiner is doing quality work or just riding the RCE gravy train? Don’t get me wrong, RCEs are not always bad.

    Quality measurement is in my opinion flawed – nearly unmeasurable. One quality initiative I think would help is to scrutinize the quality of examiners whom receive complaints. Perhaps use the Ombudsman program to figure that out – so as not to allow someone with a grudge to arbitrarily scrutinize an examiner. Right now it’s just random. Just a thought.

  87. Ignoring the increase in filings and total number of examiners for the moment, if one assumes a simple relationship between the experience level of the examining corp and “efficiency”, one would expect that application pendency would be lowest in the 2004-2007 time period.

    That’s not the way I remember it.

  88. IANAE: See the new final paragraph of the post.
    The drop in the percentage of experienced examiners (i.e., 10+ years experience) from 20% to 7% over fiscal years 2004–2009 has two components. First, the absolute number of these experienced examiners dropped from 750+ to just over 400 based on attrition. At the same time, the total number of examiner rose from 3900 to 6500. The PTO is hopeful that some of these 350 examiners who left the office during the Dudas regime will now return.

  89. “fewer than 3 years experience graph” this is what I have been looking forward to seeing. This is one of the PTO’s main problems.

  90. FEWER than 10% of the examiners have been working at the office for more than 10 years.

    How much of that is because of experienced people leaving, and how much is because of increased hiring that has reduced their relative population?

    It looks like the decline in 10+ correlates with an increase in 0-3, but it would be nice to see an overlay of total number of examiners by year.

    Either way, they’d better hope they’re right about the new hires not needing a lot of training, because the teacher/student ratio is only going to get worse.

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