Patent Examiners and Litigation Study

Guest Post by Prof. Shine Tu.  Dr. Tu is an Associate Professor of Law at the West Virginia University College of Law and a shareholder in PatentCore. His research focuses on large-scale empirical studies of the patent examination system.

In August of 2013, the GAO recommended that the PTO examine trends in patent infringement litigation and link this information to internal data on patent examination to improve the quality of issued patents and the patent examination process.  In our current study, we attempt to answer these questions: (1) which patent examiners are issuing litigated patents, (2) are examiners who are “rubber stamping” patents issuing litigated patents at a disproportionately higher rate, and (3) are examiners with less experience issuing more litigated patents?  In sum, do patent examiners who issue litigated patents have common characteristics?  Intuition would argue that those examiners who issue the most patents (approximately one patent every three business days) would exhibit a higher litigation rate.  Surprisingly, this study suggests that this is wrong.

This study uses two new patent databases, that code for nearly 1.7 million patents and approximately 12,000 patents that were litigated between 2010 and 2011.  This study determined that litigated patents mainly come from primary examiners who grant between 45-60 patents per year with between three to five years of experience.  These examiners are contributing to the litigated patent pool at a higher rate than expected.  Interestingly, the highest volume primary examiners (examiners who on average grant more than 80 patents per year and have more than 8 years of experience) do better than expected.

In the figures below, the dotted line represents the “expected litigation” based on the proportion of patents issued by the examiner.  The solid line represents the “actual litigation” rates seen.  Thus, when the solid line is above the dotted line, the examiners in that group issue more litigated patents than expected.  Conversely, when the dotted line is above the solid line, the examiners in that group issue less litigated patents than expected.

Figure 1Figure 2Certain structural factors, combined with the Preist-Klein type selection may explain the phenomena that primary examiners with 3-5 years of experience have higher than expected rate of litigated patents. During the first four or five years, when the examiner does not yet have full signatory authority, the examiner is under heavier scrutiny (review by a primary examiner as well as Quality Control).  During these years, the examiner removes easy cases from their docket (by allowing the clearly allowable cases, or by rejecting the unpatentable cases), and builds up a docket of “on the fence” applications.  Once a primary examiner obtains permanent full signatory authority (usually years 3 and above) are no longer heavily scrutinized. Additionally, production rates increase when a primary examiners acquires full signatory authority (usually an examiner moves to a GS-14 after gaining permanent full signatory status). Thus, new primary examiners who have permanent full signatory authority are in the new position of increased production rates while experiencing reduced supervision, with a larger docket of “on the fence” applications. Accordingly, these primary examiners (usually with more than 2-3 years of experience as a primary examiner) may issue these “on the fence” applications on their docket that they would have been hesitant to allow beforehand. Furthermore, applications that are “on the fence” might be more litigated than most patents. This is because strong patents could be allowed quickly by the examiner, and competitors would most likely need to license these patents, thereby avoiding litigation. Correspondingly, weak patents might take longer to issue, but would most likely not be litigated because of their weak standing. However, patents where validity is unclear may require litigation. These more uncertain patents may be issued at a higher rate when the primary examiner first receives full signatory authority (without supervision), thereby explaining the higher litigation rates in years 3-6.

There are many limitations to this study.  First, the database that we use is a broad database but suffers from some selection bias due to the examiner-matching step. Specifically, temporal selection bias occurs in the database since the examiner database contains only those patents that were issued between 2001 and 2012. Accordingly, litigations dealing with “older patents” (i.e., those patents issued before 2001) are not included in our database. Additionally, since we only have data starting from 2001, there may be a “left justification” issue.  Because we start at 2001, examiners who have worked prior to 2001 (inclusive) will be coded as working less years than they actually have worked.  For example, if an examiner started working in 1998 and quit in 2003, our database would code the examiner as working for 3 years, while in actuality the examiner was at the office for 6 years. We are currently segmenting the data to account for these examiners.  Accordingly, our results may be slightly positively skewed.

Another limitation is based on the fact that there are many reasons to bring litigation, but many of these reasons may not represent errors by the patent examiner. For example, a patent could be litigated and found invalid because of inequitable conduct. In this situation, the patent examiner may have issued a valid patent based on the fraudulent information given to her by the applicant. Another example deals with a patent that was found valid, but non-infringed. Here, the litigated patent may have been correctly issued, but litigated due to incorrect interpretation of the scope of the claims. Accordingly, simply because a patent is litigated, does not mean that there were errors made at the patent office.

To address these issues, we are currently working on a study that reviews only those patents that have been litigated to final judgment and found invalid. We then connect these invalidated patents to their corresponding examiners to determine if there are any common characteristics among the examiners who issue invalidated patents. However, we note that the pool of litigations that are litigated to final judgment dramatically reduces the sample size.

The paper will be published in 17 Stan. Tech. L. Rev. 507 (2014).  A draft of the paper is available on ssrn at: http://papers.ssrn.com/sol3/papers.cfm?abstract_id=2458140

82 thoughts on “Patent Examiners and Litigation Study

  1. There is another possible explanation for why those primary examiners with relatively less experience might be issuing more litigated patents. The Office hires and places hires based on demand. When a field becomes hot with new technology, increasing the number of filings dramatically, the Office reacts hiring new examiners for that field. Given that the pendency in those areas is higher than average, a number of those patent applications will be issued around the time those hires are achieving primary status. Precisely because of the highly innovative nature of those fields, there is going to be a number of overlapping technologies, with varying degrees of public disclosure, and higher tendency to litigate, and sometimes with varying technical terms that are being coined individually by the Applicant’s without standardization.

    Reply
    1. A point related: take a look at the historical trends of patent litigation and the link of increased litigation with the advance of a whole new class of innovation:
      telephones
      sewing machines
      transportation
      information revolution

      Check into writings by Prof. Mossoff.

      Reply
  2. Almost all studies that dig through large sets of data and test against multiple variables suffer from a fatal retrospective bias.

    The author states that “primary examiners with between three to five years of experience and who grant between forty-five and sixty patents per year are contributing to the litigated patent pool at a higher rate than expected.”

    It is highly likely that the analysis of any large body of data will show some unexpected trends. That’s why a company with product X that fails its clinical trial will do a retrospective study and discover that its drug for heart disease helped make asthma sufferers over 40, or whatever oddball result pops up.

    Similarly, in this case, the group that falls outside the expected category is plainly just one of many possible subsets.

    Retrospective bias is very hard to control for, even with sophisticated statistical treatments.

    Let me know in five years when your prospective predictions are accurate.

    Good Luck

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  3. Prof. Tu: “There are many limitations to this study.”

    I think that is the least contentious assertion in this post. Not to be a thrower of wet blankets, but I cannot see a single observation or correlation here that has any merit.

    For one thing, patents from high tech art groups are going to be pulled into court far, far more often than low/no tech groups. The time analysis could reflect temporary changes in the numbers of examiners in different groups over time.

    “Litigation” doesn’t mean poop. All of those examiners at the left side of the graph could have had their allowed claims upheld and all of those at the right could have had their allowed claims shot down, in which case the more experience an examiner has the less competent he/she is, something many of us have suspected for years. (Just kidding, 6)

    The only way I can see to make any worthwhile point is to evaluate the data on a claim-by-claim basis, or at least on an independent claim-by-independent claim basis. And the analysis should be restricted to patents issued within a given year or short interval, with examiners of differing years experience evaluated within that period.

    Example: As of 2010 Examiner “A” had been examining 2 years and between 2011 and 2014 100 independent claims he allowed in 2010 were litigated. Examiner “B,” in the same art group, had been examining 10 years as of 2010, and 100 of the independent claims he allowed in 2010 were also litigated between 2011 and 2014. OK, now ya’ got something to work with that will say something.

    If 90% of the litigated independent claims that “A” allowed in 2010 got shot down whilst only 10% of the litigated claims that “B” allowed in 2010 got shot down, that might be a difference worth talking about.

    But even these data would not be sufficient to make any firm conclusions. For instance, if on FOAM Examiner “B” rejected 80% of all independent claims he examined and Examiner “A” rejected only 5%, then that might mean claim quality is enhanced by having claims amended during prosecution. If those numbers are reversed, it might mean that practitioners do a good job of drafting claims initially and the examiners screw the claims up by forcing amendments.

    In the end, the data would require a multivariant analysis to sort out a number of independent variables. As it is, all I see is gobblygook.

    Even then the study would still require defining “litigated” to distinguish, for instance, offensive vs. defensive litigation and litigated by whom – USDC and higher? PTAB? Whatever, so long as it’s clear and valid. This study is mum on what “litigated” means.

    Basically, I’m on board w/ “Tourbillon” and “examiner.”

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  4. I do not see how valid correlation data with examiner quality can be drawn from patent infringement suit outcomes, when more than 97% of infringement suits are settled before any decision and most of the small remainder are decided on non-infringement, which is irrelevant to examiner quality. [The number decided on inequitable conduct is statistically insignificant.]
    If you want a valid study, please conduct, in about a year, a study of IPR outcomes and who were the examiners below. That will provide a direct and limited result of how many patent claims were allowed by examiners because they missed and were not provided 102 or 103 patent or publication prior art. [More accurately, IF those examiners had been provided with a several thousand dollar prior art search, because I think such a study will show that relatively few successful IPRs are won on patent or publication prior art that was found by the examiner below. Only those latter few could be a basis valid criticism.]

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  5. It would be nice if we could get a study done by somebody, anybody, who really understands how the examiner production system works, and the game playing and shenanigans the examiners engage in to work the system to their benefit. Until we get that the rest of these studies (e.g. Lemley and Moore’s “continuation abuse” claptrap) are just meaningless drivel.

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    1. At the risk of confusing 6 (notably easy to do), I agree completely.

      Fold into this the canard of ‘wearing down the examiner.’

      As I have often advised, a good solid examination is highly desired. Sure, there are some clients out there that are interested in pure ‘bloat’ – number of patent crunching (funny enough these tend to be the same ones that use the denigration of the ‘Troll’ label against others), and those may want a ‘runner stamp’ affirm mode for their own apps. But such has never been the position that I have advocated.

      Instead, duly and properly examined applications – those that earn the Quid Pro Quo – should be relished and celebrated and aimed for ever increasing numbers.

      Getting to that point (and here the mischaracterizations run rampant), solid examination is most welcome. A well written and accurate Office Action allows me to have a candid discussion with the client and point out solid cost/benefit trade offs of continued prosecution and potential claim scope. Contrast that with a p1ss-poor Office Action, and the clients’ (correct) assessment that the Action lacks merit, and well, we seed what we have now in the stacks and stacks of applications in the various queues of awaiting first action, awaiting second action, RCE, and appeals. As I have also often noted, there is a direct correlation with the rise in these queues and the actions of pre-Kappos administrators (known as the Reject-Reject-Reject era). The attempt to reject their way out of providing valid (and yes, at times difficult) examinations is at the root of the problems in the patent world.

      Contrast too the numbers of applications/patents affected and contrast that with the greatly exaggerated “litigation” problem (the flea on the tale of the dog wagging the dog issue).

      Separate the huge amount of FUD and anti-patent rhetoric and focus on making actual improvements in examination.

      The rest will take care of itself.

      Reply
    2. AAA JJ, somebody who knows how it works?

      Check RandomGuy’s post at 9.

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      1. While flawed, and sometimes seriously so, I will say that Random Examiner at least tries to look at examination (and improvement thereof). Unlike several others (not naming names like Malcolm and 6) who would rather simply stick their heads in the sand and complain about “grifters” and such.

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      2. Ned, if there’s anybody who understands the game playing and shenanigans that examiners engage in to exploit the production system in pursuit of their counts, I have no doubt RandomExaminer is the one.

        Reply
  6. That second graph would be a lot more meaningful if it was actually normalized as the title seems to imply. If it’s “litigation rate” by “number of patents issued”, then shouldn’t that be a percentage?

    Reply
  7. The data here is bunk because it doesn’t differentiate between patents issued by primaries that they solely worked upon and patents issued by primaries with a junior doing the work. That entirely skews the picture of any data about primaries. Nor does it control for any of the things that matter.

    You don’t need a study to answer this question, you need only interview some Examiners and you’d get a simple answer, but if you were going to do a study I don’t know why you go and try and create your own database of relevant data when the office has a superior database just sitting there for each Examiner…

    In any case, for those who want an on the ground view of what makes for good examination, from most to least important:

    1) Whether the examiner received legal training from elsewhere besides the office
    2) Examiner training in his art (i.e. masters, ph.d) for biochem and certain high level physics applications
    3) Examiner IQ
    4) Examiner ability and desire to engage in writing rather than science/math, including Examiner command of the english language and of legalese
    5) Whether the examiner is a primary, or reports to a primary that treats them as a primary, or not
    6) Examiner GS level (the lower the better), this takes a significant jump when partial/full signatory authority is reached
    7) Examiner training in his art for all other technologies
    8) Average attorney ability for applications examined by examiner
    9) Examiner ability to search prior art
    10) Whether one is a primary or SPE that signs off on cases done by juniors who tip significantly good/bad in the above criteria

    My bet is that everyone outside of the office would put 8 (probably due to hubris) and 9 much closer to the top. How good one is at searching has little to do with how good they are at the job. If one is looking for the #1 means of determining whether an Examiner is good or not from a statistical standpoint, that doesn’t even need a list: Ratio of applications abandoned/appealed versus allowed, as compared with others in their TC.

    For example, a junior examiner who is a GS-10 (two levels under GS-
    12) may have to reach only 85% of the disposals required by a similar examiner
    in the same art unit who is a GS-12. Similarly, a senior examiner who is a GS-
    14 (two levels over GS-12) may have to reach 110% of the disposals required
    by a similarly situated GS-12…

    These numbers are startlingly off, and it’s an important fact.

    Therefore, US patent examiners issue patents at a rate comparable to their EPO and JPO counterparts, even though US examiners examine more than twice the number of claims, while receiving a compensation package that is only about
    58% of EPO examiners and less than 50% of JPO examiners. Unsurprisingly,
    the annual staff turnover rate at the PTO was about 30% in 2008. In contrast,
    the turnover rate at the EPO was between 3-5%, and the turnover rate at the
    JPO was 0-3%.

    Although just one of many, this fact alone destroys the validity of the study. You might think not, but it does.

    Reply
    1. Why isn’t the shadow director Lee (soon to be returning to industry for her reward) concerned with these issues?

      Reply
      1. You are not paranoid if they really are out to get you ;-)

        Comment on strong pullers too close to the mark – pay no attention to the man behind the curtain. The government really is not spying on its own citizens. Who is monitoring the monitors of the monitors?

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        1. You picking on me anon? The naiveté on this board never ceases to amaze me. Often, people in DC get appointed by industry and then as a reward for performing what the industry wants, they receive their reward in the form a very large stock option. Lee is very, very clearly in this boat. Approved in the shadows of the Oval Office by the anti-patent crowd and snuck into the PTO by Obama. Revolting.

          And, we can see some of the characteristics that prove that this is what this Lee creature is. She acts as if these aren’t her problems, but some innate characteristic of the beast to be slain. She should be removed immediately.

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          1. But oh my goodness, what dirt bag for a judge is Obama going to pull out of the mud pits this time. Harvard bourbon swilling liberal arts person that never thought about science or patent law in their life? Virulent mad man from the DOJ who couldn’t figure out a physics problem if its life depended on it? PTO lawyer trained by Dudas?

            Can’t wait to see the latest dirt bag we get for the Federal Circuit.

            Reply
            1. “Harvard bourbon swilling liberal arts person…”

              I doubt bourbon is the drink of choice amongst the Cambridge literati.

              Just saying. :-)

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      2. Night, the faux director is leaving? Huh?

        Where did you get this?

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    2. “1) Whether the examiner received legal training from elsewhere besides the office”

      This is unfortunately true. The PTO trains examiners how to reject. The examiners are taught their job is to reject applications and what to insert into the OA’s to get them signed. The old “build a record” mentality still reigns supreme at the PTO.

      What the examiners should be taught is objectivity. They should be taught how to find and evaluate the relevant evidence, resolve the required factual inquiries with the evidence, and make correct factual and legal conclusions. But what they are taught is, “The answer is: the claims are unpatentable. Make up whatever goofy nonsense you need to reject the claims, and wait for the applicant to respond. If you’re lucky you’ll get one of those applicants that thinks they need to ‘work with’ the examiner, or who is ‘afraid to get on the examiner’s bad side’ and you’ll get an RCE or two before allowing the case.”

      Until that examination model is killed and buried, all of the academic studies in the world about “patent quality” ain’t gonna amount to a hill of beans.

      Reply
      1. But what they are taught is, “The answer is: the claims are unpatentable. Make up whatever goofy nonsense you need to reject the claims, and wait for the applicant to respond. If you’re lucky you’ll get one of those applicants that thinks they need to ‘work with’ the examiner, or who is ‘afraid to get on the examiner’s bad side’ and you’ll get an RCE or two before allowing the case.”

        I’ve encountered an awful lot of this as well. In the last year or so I’ve increasingly encountered a really bizarre culture of “let’s make a deal so that nobody has to do any real work.” This manifests itself in calls from junior examiners who have been told to make a deal for claim 7, since that’s the one that is 4 deep in the dependency chain. These are pretty sad, especially when you ask them what art this “offer” is based on and they admit that they don’t have any yet. They seem genuinely confused when you explain that your client would prefer to have the claims actually examined.

        This often happens after a response to a really poor first office action, when it apparently becomes clear to someone that they either have to make a deal or do the job again. If you don’t take the deal, you’re often subsequently “punished” with a bunch of suddenly discovered indefiniteness rejections and the like.

        Reply
        1. “If you don’t take the deal, you’re often subsequently “punished” with a bunch of suddenly discovered indefiniteness rejections and the like.”

          Well I mean, you did just say you wanted the full on examination right? If someone’s asking for it then I see no reason not to give it to them. You literally just asked for it. Maybe 2x since they were “confused” the first time.

          Maybe they aren’t so confused about why you might like an examination. Maybe they’re actually confused as to why you’d voluntarily call down the wrath of all the patent statutes and the full weight of the Federal government onto your head instead of just taking you an entitlement. I mean, you know, you can sit and haggle in making a deal. But voluntarily calling down the federal gov to find reasons to reject your application for an entitlement … I mean … it’s up to you.

          Frankly I’m all for making a deal in the patent realm, though I also support basing the terms of the deal on some evidence. As I understand it that’s how the old timers did things so I see no reason for that aspect to change.

          Reply
          1. Delightfully vap1d 6.

            Par for the course from you.

            The passive/aggressive “threaten” those calling for better examination by implicitly assuming that the silly rejections are appropriate (not understanding and apparently not caring that the post you are responding to is saying the EXACT opposite).

            The projection onto the applicant and her representative of “confused,” when the post that you are responding to is saying that the confusion lays with the examiner.

            The repeated mischaracterization of “entitlement,” continuing to ignore the Quid Pro Quo and the lack of fit with what a government entitlement means (objectively).

            Wanting to “make a deal” when such is the point of the post that you are responding to is that such “make a deal” is part and parcel of the problem of examination.

            You are probably completely unaware that your response verifies what the problem is – and the problem is you.

            Reply
      2. The PTO trains examiners how to reject.

        That is not what I meant by (1). Further, I’ve found people who have this opinion tend to not appreciate how broad the KSR ruling is.

        They should be taught how to find and evaluate the relevant evidence, resolve the required factual inquiries with the evidence, and make correct factual and legal conclusions.

        Indeed, I’m with you here.

        Reply
        1. tend to not appreciate how broad the KSR ruling is.

          LOL.

          Ahhh, care to outline your understanding of just how broad that case is Random Examiner? Care to reflect on the not-so-unforeseen consequences of having such a broad ruling? Or perhaps you too share in the lack of appreciation…

          (be careful, that sword is a double edged sword)

          Reply
          1. I’d be interested in hearing your thoughts on how “broad the KSR ruling is” also. As far as I know, to establish obviousness by a preponderance of the evidence the examiner still has to establish that all of the claimed features are within the scope and content of the pertinent prior art, that there exists in the prior art a reason to modify/combine the prior art, and that there is a reasonable expectation of modifying/combining the prior art to arrive at the claimed invention. KSR didn’t change any of that.

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            1. Careful cardman, your aligning with actual law will likely confuse 6 and think that everyone who understands and applies the law must be the same person.

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    3. “8) Average attorney ability for applications examined by examiner”

      “My bet is that everyone outside of the office would put 8 (probably due to hubris)…much closer to the top”

      I doubt “everyone outside the office” would put 8 much closer to the top. But attorney skill is an important factor. If the attorney is from the “let’s work with the examiner” and “let’s not get on the examiner’s bad side” school of thought, you’re gonna end up with a sh!tty patent. No doubt about it. If the attorney is from the school of thought that applicants should get the claims that they are entitled to under the law, you’re gonna get as good a quality patent as is possible to get from the PTO.

      Which leads me to your “9) Examiner ability to search prior art.” Your conclusion that “[h]ow good one is at searching has little to do with how good they are at the job” is just plain ridiculous. It’s impossible to overstate how incredibly wrongheaded that belief is.

      How well the examiner resolves the factual inquiry into the scope and content of the prior art (i.e. whether the examiner finds the truly most pertinent prior art) is the single most important factor in determining whether the resulting patent is a “quality” patent or not. Believe it or not, the applicant does want the examiner to find the closest prior art. (That’s why the ones who can afford it file a PCT and designate the EPO as the ISA.) But instead what applicants usually get from the USPTO examining corps is the usual, “Well, giving the claims their BUI, here’s some completely non-analogous art that ‘reads on’ the claim. Hur, hur, ain’t I so clever. Can I haz RCE now?” That doesn’t lead to much patent “quality.”

      Reply
      1. I could not agree more with how good an examiner is at prior art searching having VERY much to do with how good they are at their job. If you do not think so, you have simply not been paying attention to the very high percentage of IPRs and prior inter partes reviews in which very much better [and searchable] patent or publication prior art was found and applied to the issued patent claims as compared to the art applied to those claims as an application by the examiner.
        But what kind of average prior art search and examination can one expect from the USPTO when it sets a current fee value (“Utility Examining Fee”) of only $750 max, with big discounts for small businesses. How thorough a prior art search and multi-claim claim-by-claim analysis report would one get from a private search contractor for only $750 max these days?

        Reply
        1. For $750 – we’ll search for the subject matter in your Abstract and shown in a couple of Figures.

          You need to make that number a lot higher for us to read claims and understand what each and every word represents.

          Reply
      2. Which leads me to your “9) Examiner ability to search prior art.” Your conclusion that “[h]ow good one is at searching has little to do with how good they are at the job” is just plain ridiculous. It’s impossible to overstate how incredibly wrongheaded that belief is.

        I think that’s good logic for an outsider’s view.

        All of the examiners who are truly terrible at searching aren’t signing their own cases, and their bosses know they’re bad at searching, because 103, along with 112, 2nd are the only ways you can really judge an examiner outside of the signatory program. The end result being that examiners who are bad at searching just end up working longer hours, not actually contributing to bad patents.

        Similarly, Examiners who are good at searching but not good with the other facets of the job have an incentive to leave the office for the private sector. Examiners who are good at the job aren’t relying upon citing prior art in an office action to force an applicant to make all the substantive changes. The tail ends are mitigated, and it’s simply not that important.

        One examiner who is good at searching and chooses to be lazy about it will do far more damage than all of the examiners who are bad at searching put together.

        you have simply not been paying attention to the very high percentage of IPRs and prior inter partes reviews in which very much better [and searchable] patent or publication prior art was found and applied

        Well sure, if you’re actually going to spend money on a particular application :) The question is what examiner traits lead to more suits. The differential of searching ability between examiners is not great enough for it to be a big factor.

        IPR submissions are apples to oranges. You can’t possibly compare an examiner having 15ish hours to search and produce a first action with what you can find given a hundred hours of just matching claim language. The language in a final application is set, the language during prosecution is fluid. It does the examiner no good to find art that reads upon unclaimed matter that would otherwise fit the spec. Nor are examiner’s later searches about the claims as a whole but tend to be based on the amended changes.

        Reply
        1. You show koolaid stains of not recognizing the damage of preventing allowable patents.

          History clearly shows the damage of a Reject-Reject-Reject mindset.

          Learn padawan.

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        2. “All of the examiners who are truly terrible at searching aren’t signing their own cases…”

          You’re either 1) incredibly naive or 2) lying.

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      3. If the attorney is from the “let’s work with the examiner” and “let’s not get on the examiner’s bad side” school of thought, you’re gonna end up with a sh!tty patent.

        But instead what applicants usually get from the USPTO examining corps is the usual, “Well, giving the claims their BUI, here’s some completely non-analogous art that ‘reads on’ the claim. Hur, hur, ain’t I so clever. Can I haz RCE now?” That doesn’t lead to much patent “quality.”

        This is something I have never understood. One receives more credit for less work when one allows the case in every possible situation. An examiner doesn’t reject you because they’re lazy (rejection is akin to prosecuting a criminal case wherein the criminal both controls the crime scene and writes the law, it is not an enjoyable act lawyers seem to think it is), they reject you because they, or their boss, think that you’re not entitled to the scope. If we truly didn’t care about our job we’d allow everything because it makes not one lick of difference to us financially and results in far less work.

        Some examiners choose to specifically cite cases that read on the outskirts of your claim to show you that you have to tighten your scope (better examiners will make 112, 1st rejections). We could tell you a scope is too big and you need to shrink it, but then you’ll laugh and demand evidence (see DanH at 9.2.1), and when you get the evidence you’ll complain that we’re fishing for RCEs (see yourself). Would that I could craft your claims for you and tell you the acceptable scope, and you can either appeal it or not, but that’s not how the system works.

        Here’s the thing, when you get a rejection it’s either a good rejection or it’s not. If it’s not good, take it all the way to appeals, the examiner will either be turned around before it gets there or a senior examiner will sign off that they’re right. If it’s good, congratulations, you got an examination, but don’t complain about the strategy with which the examiner chooses to build a valid rejection, because the guy next to you would complain if it was done different.

        Reply
        1. This is something I have never understood. One receives more credit for less work when one allows the case in every possible situation

          You fail to understand because you fail to realize that you are clinging to a wrong belief.

          It is that simple.

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        2. “Some examiners choose to specifically cite cases that read on the outskirts of your claim to show you that you have to tighten your scope (better examiners will make 112, 1st rejections).”

          Thanks for confirming that examiners engage in these shenanigans. But I, and all of other practitioners (well maybe not Ned), and you too, already knew that. You may want to review Rule 104(c)(2), which you are bound by, and MPEP 904+, which you are also bound by.

          “We could tell you a scope is too big and you need to shrink it, but then you’ll laugh and demand evidence (see DanH at 9.2.1), and when you get the evidence you’ll complain that we’re fishing for RCEs (see yourself).”

          Why do I have to “demand” the best evidence you have? The applicant pays for a lawful examination, which includes examiners abiding by the Rules and the MPEP, especially the two I mentioned above. As for fishing for RCE’s, what other reason would an examiner have for not citing the best evidence in the first OA?

          “Would that I could craft your claims for you and tell you the acceptable scope,…”

          If you could craft the claims of the scope the applicant is entitled to, you wouldn’t be examining.

          “…and you can either appeal it or not, but that’s not how the system works.”

          That’s exactly how the system works. Any applicants whose claims have been twice rejected can appeal.

          “Here’s the thing, when you get a rejection it’s either a good rejection or it’s not. If it’s not good, take it all the way to appeals, the examiner will either be turned around before it gets there or a senior examiner will sign off that they’re right.”

          That’s exactly what I do. I’m aware, and you are too, that 75% of the cases in which a pre-appeal or an appeal brief are filed are re-opened. I don’t file RCE’s to try to “work with” the examiner. If the rejection doesn’t meet the legal requirements, I appeal.

          “If it’s good, congratulations, you got an examination, but don’t complain about the strategy with which the examiner chooses to build a valid rejection, because the guy next to you would complain if it was done different.”

          Not sure what “the strategy with which the examiner chooses to build a valid rejection” is supposed to mean. The rules and the MPEP are very clear: the examiner is required to present all valid grounds of rejection using the best evidence available to the examiner. There’s really not much “choice” in that for the examiner.

          Reply
          1. Listen, AAA JJ, I might have unique perspective here among posters. I was patent counsel of a major corporation, and was on the receiving end of bad patents. Most prosecutors do not have this perspective. Nor do litigators.

            Inside counsel from big companies like IBM or Google or Microsoft may be able to see the patent system from the larger perspective. But to truly understand the problems presented by bad patents, one has to be an executive and have some responsibility to defend against bogus patent claims.

            I do not say that prosecution counsel such as yourself should not do the best for their clients. But I do object to asking the PTO to bend over backwards to give you a patent. That can only lead to issuing a lot of bad patents that are not good for America or the patent system as a whole, even though they might be good for prosecuting attorney.

            I am surprised and pleased that MM shares my views almost 100%. I wonder if he is or has been inside at a company that has been on the receiving end of the patent system.

            Reply
            1. You are pleased that the most vile person on the board shares your views…

              (that’s right up there with your “6-is-a-genius-because-he-shares-your-views” comment.

              /face palm

              Reply
            2. “I was patent counsel of a major corporation,…”

              Me too.

              “…and was on the receiving end of bad patents.”

              Again, me too.

              “But to truly understand the problems presented by bad patents, one has to be an executive and have some responsibility to defend against bogus patent claims.”

              I do.

              “I do object to asking the PTO to bend over backwards to give you a patent.”

              I’m not asking them to bend over backwards. Simply obey the law is all I’m asking for.

              Reply
        3. “An examiner doesn’t reject you because they’re lazy…”

          Lulz. Now I know you’re just lying.

          Reply
        4. RandomGuy, the examiner should get credit for proper work done, not for dispositions.

          Reply
          1. You know what they say, you get what you measure…

            (and yes, I have offered improvements to the examination system in the past and the very first step should be to get away from the one-size-fits-all Widget mentality)

            Reply
    4. <i?The data here is bunk because it doesn’t differentiate between patents issued by primaries that they solely worked upon and patents issued by primaries with a junior doing the work.

      Also doesn’t differentiate between patents issued after Board reversals. I think the office policy is to issue these applications. That’s got to be at least a few percentage points (if not much more) of the allowed cases each day.

      Reply
    5. RandomGuy,

      If a patent is litigated, it has claims that cover the infringer’s products.

      This could happen when

      1. The infringer copies the products of his competitor.
      2. Independently develops the invention (really?).
      3. The patent covers the prior art or is an obvious variation that lies in the path of development.
      4. The patent has “functional claims.”

      Item 3 can be addressed, in my view, by liberalizing searching. Provide for a second, mandatory search after the first substantive response by the applicant. That response will clarify the claims.

      Item 4 has only recently been recognized by the executive branch (other than the PTO) and congress to be a problem — although the courts have long recognized it to be a problem.

      You, Random, are well versed in Perkins Glue, Wabash Appliance, United Carbon, and Halliburton/Faulkner v. Gibbs. But I daresay, the examining corps is not.

      May I suggest that someone in the PTO should put these cases on a mandatory reading list and reference them in the MPEP?

      Reply
      1. Provide for a second, mandatory search after the first substantive response by the applicant

        Ned, please refresh yourself on the Tafas case. The Office is the party (critically) responsible for examination and not the applicant.

        Reply
      2. “Item 3 can be addressed, in my view, by liberalizing searching. Provide for a second, mandatory search after the first substantive response by the applicant.”

        There was a proposal for just such a modification to the “compact prosecution scheme” currently being used by the PTO. A couple guys from like Woodcock and Washburn IIRC. They presented it at a PPAC meeting a couple months back. Then the president of POPA (i.e. the examiners’ union) got a chance to respond and he was basically apoplectic and outraged that anybody would even suggest that examiners were playing games with the initial search and FAOM and relying on the old “necessitated by amendment” trick to cite new art make the second OA final and sit back and wait for the RCE. He was shocked and outraged!

        He’s a t00l. He knows full well that’s how most of the examining corps is doing such record breaking outstanding quality work at such record breaking outstanding quantity.

        The solution to 3) Ned is very simple. So simple that I can hardly believe I need to post it: the PTO should enforce the requirements of Rule 104(c)(2) and MPEP 904+.

        “May I suggest that someone in the PTO should put these cases on a mandatory reading list…”

        Funny. The examiners can’t even be bothered to read the applications they’re rejecting, you want to make reading 19th century patent case law mandatory. You’re cracking me up, Ned.

        “…and reference them in the MPEP?”

        I too would be delighted to read the comically bad and incorrect spin the editors of the MPEP would put on those cases.

        Reply
        1. AAA JJ, dealing with unions is a art. One of the things that one cannot do is confront them or their clientele in public.

          I think the proponents of the plan for a second search should have addressed the examiner credit in their proposal, and should have cleared it through the union in advance.

          Regarding the MPEP, I share your concerns. I rarely rely on it save to force the examiner to do something. The PTO often gets the law wrong. But if they get it wrong in their favor, we get to appeal. If they get it wrong in our favor, we get the patent, but it is potentially a litigation magnet. If you attempt assert it, into the PTO you go with an IPR. I am not sure clients really want that.

          Reply
  8. Please, Lord, let not this ‘research’ ever become a cited-to document, by anyone.

    Reply
  9. “These examiners are contributing to the litigated patent pool at a higher rate than expected. ”

    prolly because they got their primary before they were really ready for that. Especially if they came into the office as an 11/12.

    They can do the numbers but don’t really “know the art” yet (even if then do know the everyday art from their old business experience).

    That would just be my guess. But, the office wants more primaries faster all the time.

    And also yeah I kind of doubt your hypothesis about a backlog of “on the fence cases”. Frankly I’d say very few examiners carry a “huge” enough “backlog of on the fence cases to make a hill of beans statistically speaking. The whole “doesn’t know the art well enough for their production reqs even though they have full sig” explains it so much better.

    “Interestingly, the highest volume primary examiners (examiners who on average grant more than 80 patents per year and have more than 8 years of experience) do better than expected.”

    That is actually not unexpected by me at all. Once you know the art, you know the art. There ain’t but one way about that. And there ain’t but one way to know the art, and that is to spend years looking at it.

    Reply
  10. One quibble: “improve the quality of issued patents” really should read “improve the quality of the patents that the PTO issues.”

    What this does seem to point out is that difficult cases take longer. Who’d of thunk that?

    MM and I both suspect that most litigated patents today are patents that are really non statutory “business method” patents. It would be nice to see if our rough gestimate finds correlation.

    Reply
      1. Kool-aid much?
        I hear Kool-Aid is in short supply in San Diego.

        Reply
  11. Cherry picking of dockets is probably not a huge contributing factor here. Examiners generally don’t have huge numbers of cases sitting around on their new docket, and the oldest one will get selected for workflow in any biweek when the last oldest new was completed. So while there is a possibility that an examiner will cherry pick his or her docket down until they have a bunch of dog cases left that they then have to work on all in a row, the time scale for this is not within the time frame suggested (currently, no examiner is supposed to have more than a six month inventory of cases on their new docket, which is a far cry from three to five years).

    I also agree with “examiner” in post #1 below. Most examiners coming in today won’t make primary for five to six years, and that’s if they stay on top of their promotions the whole way up. So the statistic of “primary examiner with 3-5 years experience” is confusing. I also have questions about whether patents are being double-counted, once for the junior (assistant) examiner and once for the primary, and if so, does this take into account the fact that many of the “primary” examiners signing junior examiners’ cases are actually SPEs who don’t have their own dockets anymore?

    In any case, I suspect that there is one major determining factor that far outweighs the tendencies of individual examiners: technology area. Certain fields of art likely have far more litigation activity than others, because there’s so much more money at stake. Since individual examiners are more or less permanently assigned to a fairly specific technology area, the litigation rate of each examiner will likely be dominated by their technology area, which is something you’ll need to normalize for before your data will really mean anything.

    Reply
  12. Given what others have already said below (and will soon say above) … and the numerous limitations and caveats the authors themselves admit to … this attempt at worthwhile scholarship ends up instead coming across as nothing more than an unfair, unsupported (and unsupportable) attack piece on examiners.

    Respectfully professor, you’re in a hole.

    Time to stop digging.

    Reply
    1. While the target was missed, I will give kudos to at least attempting to look at something that should be the focus of improvement efforts.

      Reply
    2. “this attempt at worthwhile scholarship ends up instead coming across as nothing more than an unfair, unsupported (and unsupportable) attack piece on examiners.”

      Not at all brosef. There’s a small class of examiners that seem to issue the most litigated patents. Nothing bad to say about them as people. It’s the overall “system” at work here, not some random individual singled out or even the whole group of people as a group.

      Reply
      1. “There’s a small class of examiners that seem to issue the most litigated patents.”

        Really? What are their names?

        Reply
        1. Also, is it possible that the examiners just happen to be in the art units that are currently hot for litigation? Or just in a particular subject area that is hot?

          Reply
        2. “Really? What are their names?”

          You can look up all such individual examiner’s names within the class of examiner IDed by the professor yourself with some software like what Eugene is hawking on his site I would think.

          Reply
  13. The causality is tenuous and the premise flawed.

    The premise is flawed because it assumes if a patent is litigated, that is a sign of poor examination. However, it may mean (as it often does) that a patent on an important invention got issued without worthlessly narrow claims, that one or more large companies ignored the inventor’s offers to license (I know, never happens, right?) and because the patent had merit the inventor at least had the chance to protect his property.

    The causality is tenuous because examiners who intransigently issue only worthlessly narrow claims likely will not have many patents litigated, but it does not mean they are according patent applicants the scope they deserve. They are not doing their job any better than an examiner who issues mindlessly broad claims – which, if they indeed are mindlessly broad, likely won’t be litigated either, as prior art would be expected to be readily available early on against them.

    Using litigation as a proxy for correct examination makes little sense. If patent litigation is an inherently pernicious exercise, close the PTO.

    Reply
    1. “The premise is flawed because it assumes if a patent is litigated, that is a sign of poor examination. ”

      Idk about that. They’re just saying that such could be a major factor, and likely is in some of the patents at hand. Not that it necessarily is in all cases.

      Reply
      1. “They’re just saying that such could be a major factor, and likely is in some of the patents at hand. Not that it necessarily is in all cases.”

        Yeah, it “could be”. And likely is in “some” cases. How many Mr. Wizard? One percent? Or ninety? No way of knowing based on this study.

        Clear now?

        Reply
    2. “The causality is tenuous because examiners who intransigently issue only worthlessly narrow claims likely will not have many patents litigated, but it does not mean they are according patent applicants the scope they deserve. ”

      I somewhat agree with that though.

      Reply
      1. Yes indeed. Here’s the thing: a large company can afford to throw money at intransigence and eventually prevail. Believe me when I say, this happens ALL the time.

        Not so a small inventor. For those schmucks, the choice too often comes down to, accept whatever worthless red ribbon the examiner will give you, or put your family’s finances in turmoil. Believe me when I say, there is only so much pro bono that you can shoehorn into your billable day. Shoehorn it we try and shoehorn it we do, but not everyone fits. They are the casualties.

        Reply
        1. “Not so a small inventor. For those schmucks, the choice too often comes down to, accept whatever worthless red ribbon the examiner will give you, or put your family’s finances in turmoil. Believe me when I say, there is only so much pro bono that you can shoehorn into your billable day. Shoehorn it we try and shoehorn it we do, but not everyone fits. They are the casualties.”

          Yes yes, the lament of the “poors”. Of course, they aren’t really poor poors so to speak, g e nerally speaking. They’re middle class dudes that want to play in the sport of kings. I mean … okay. Though I guess you’re maybe right. Even though we’re already making their examination practically free at like 750 dollars iirc, why don’t we just go the extra mile and just charge them 100$ to apply and 100$ to RCE or appeal? I mean hec k, just let the corporations bear the burden of the patent system’s costs.

          If we were charging everyone the price of examination those poors/middle classers probably wouldn’t even generally be playing in the first place. They should doff their hat to a big corp for footing most of their bill as soon as they filed their application.

          Reply
          1. “If we were charging everyone the price of examination those poors/middle classers probably wouldn’t even generally be playing in the first place.”

            It costs a large entity $1,600 to file an application. Given that the average expectancy is about 20 hrs/BD that works out to about an average of $80/hr for the examiners time. That’s about what the time is worth. And I’m being generous.

            Reply
            1. “Given that the average expectancy is about 20 hrs/BD that works out to about an average of $80/hr for the examiners time. That’s about what the time is worth. And I’m being generous.”

              W-hi-ch has n-ot-hi-ng to do with pric-ng the po-ors out of pat-en-ts by si-mp-ly ch-ar-ging ev-eryo-ne the cost of an av-g ex-ami-nat-ion (say 4.5k or more) up fro-nt. But thanks for that random chime in!

              Reply
              1. Lulz. Where are you getting this “say 4.5k or more” for an average examination? Let me guess, from your man crush Dufas.

                Lulz and lulz some more.

                Keep wanking, examinerturd.

          2. Oblivious to reality, as befits a federal employee.

            I am not referring to “middle class dudes that want to play in the sport of kings”. I am referring to smart, ambitious, young inventors I have represented, not all of them minorities, who had to beg their family just for the PTO filing fee.

            Stay ensconced in your +$100K federal latte-sipping bubble of Northern Virginia and Chevy Chase “brosef”. You are unfit for reacting to the real world.

            Reply
            1. Also, 6 does not recognize the “sport of kings” theme even as he uses the term.

              Look at the AIA and who pushed it through.

              Brush aside the political rhetoric and see that we have a new system of much higher costs, no improvement in processing time, no improvement in actual examination quality, and far more uncertain rights of the final product.

              Can ANYONE provide a definition of quality and pass the laugh test when the numerator of quality is so diminished and the denominator of quality is ‘augmented’ and yet call the result an increase in quality?

              Reply
  14. The data is confusing. Is “years” counted FROM (i.e. time=0): (a) when the primary gets PSA; (b) when the primary gets FSA; or (c) when the primary first started working at PTO? Other Q’s/issues: Do you account for years as junior before becoming PSA/FSA? Do you account for law degree? PhD? Art unit? Tech center? How about whether the examiner came in as GS5, 7, 9, 11, etc.? I think the data could use some serious breakdowns…

    Reply
  15. “Another limitation is based on the fact that there are many reasons to bring litigation, but many of these reasons may not represent errors by the patent examiner. For example, a patent could be litigated and found invalid because of inequitable conduct.”

    What? Patents are litigated because somebody is perceived to be infringing. Most companies I know don’t litigate a patent until they determine it is not likely to be found invalid.

    Also “less” does not equal “fewer”.

    Reply

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