Patently-O Bits and Bytes

  • Need some help from SPEs: Stanford Law Professor Mark Lemley is working on a project involving an extensive amount of patent prosecution data. He would like to clarify a few issues on patent office practice and could use the help of current or former SPEs.  One particular question that he is asking involves the assignment of examination duties within an art unit. I.e., once an application is classified, what is the process of deciding which examiner will handle the case?  You can contact him at

14 thoughts on “Patently-O Bits and Bytes

  1. 14

    Isn’t there a trial date for the second Patent Troll Tracker case coming up? The plaintiffs probably squeezed in a few more acting lessons over the holiday break. Sitting on a tack works pretty well, too, I’m told.

  2. 13

    At least Lemley is focusing on a real problem. But, I tend to agree with waste of paper. Lemley’s work has been devoid of reality.

  3. 12

    Oh great–another scholarly article on patent prosecution by a non-practitioner. I look forward to hearing more science fiction from Professor Lemley about “continuation abuse” and “wearing down the examiner.”

  4. 11

    “encouraging points”

    I wish that’s true. I made some suggestions to improve efficiency and quality when I first came to the USPTO. Unfortunately, the SPEs are either helpless or indifferent in this large environment. Worse yet, one feedback I got was, Why waste my time? That I should just focus on my production!

  5. 9

    All right, okay, but it’s a touchy subject for me because my lazy SPE’s unprofessional treatment of me was a main reason I left that place about 10 years ago.

  6. 8

    Hey, I’m just teasing, jpguay. I just thought the potential ambiguity in your post was amusing. Your story confirms what one would expect in an entrenched bureaucracy – innovation is often discouraged. It happens in the corporate world too, believe me.

  7. 7

    Yes, I tried to get some SPEs to turn on the others. Geez.

    Look, I put this together on my own time to make things better for both examiners and applicants. Don’t give me a hard time “BigGuy.” My SPE gave me random cases covering 900 subclasses. I was a primary. It was difficult, but I persevered and produced good searches. Look me up if you want.

  8. 6

    “I felt like swinging at one of them! No one, however, would help me get a pilot going.”

    Was the proposed pilot for testing your algorithm, or for swinging at one of them?

  9. 5

    yapex, your link posts some very interesting and encouraging points. I feel exactly the same way about classification and assignment of cases.

    I took my position while at the PTO very seriously. I even devised a rough algorithm for a system that would “automatically” assign cases to examiners once a determination of classification was made (even a “rough” one within a class). The new SPEs and a Director thought it was worth trying, but the older SPEs were in my face about it. I felt like swinging at one of them! No one, however, would help me get a pilot going. Lazy good for nothing SPEs!

    So glad I left.

  10. 4

    link to

    Based on my experience so far at the Office, the SPEs are simply assigning randomly the cases upon request for new applications. Sometimes they’d just assign the oldest 10 cases, based on the filing date. Other times, they’d pick groups of 5 here, skip some, pick the next 2, skip some more, and pick the remaining 3. Not sure if some of them may assign cases with the least number of total/independent claims to their favorite examiners.

  11. 3

    Please let me provide comments, please! [My last post was erased.]

    Specialties are being discouraged by a large number of SPEs, who dole cases out in peculiar fashions for the sole result of attaining a bonus. Some do it punitively and forever keep the cycle of dysfunction turning.

    These guys are the worst problem at the PTO. I know! I left and took two other primary examiners with me because of the practices of these leaches. I had no problem meeting my expectations, received awards regularly, and donated much of my time training people for no other time.

    However, I had one of the worst SPEs in the history of the PTO.

  12. 2

    Oh man oh man, this is the reason I left the PTO after almost eight years. Oooo oooo Pick me! Pick me!

    The few good ones let examiners develop dockets with a specialty to allow higher quality actions. They also let juniors begin to develop a specialty early on.

    The bad ones (many of them, like my old buddy Olikky The DIckee) would give cases out in a peculiar fashion that has no value, except for making his “bonus” larger.

  13. 1

    RE: “the assignment of examination duties within an art unit. I.e., once an application is classified, what is the process of deciding which examiner will handle the case?”

    While it probably varies some throughout the office, in the area I worked, and at least most of the TC I was in * many other areas, the process was something like:

    1) Case is initially reviewed (by a SPE or examiner) & determined if it belongs in our class;

    2) If it belongs in our class, a determination is made as to what subclass it should be classified in (a transfer request is made if it does not belong) and the case is classified therein;

    3) The case is put on a “master” docket for either the whole class or for a particular subset of subclasses, depending upon if all the examiners in the class work on all subs or only a portion (docket) of the subs. This varies class to class. Usually, these “master” dockets are in the name of a SPE;

    4) When an examiner needs more cases they make a request to the SPE & the next oldest “X” many cases are assigned to that examiner. The number of cases that an examiner may have left when requesting more & the number that would be added varied throughout the TC/office. The hrs/bd would also have an effect on these numbers. In my area, we tried to keep the remaining number down to 2-4 & the number added about 10. The cases that an examiner are given would be from the docket (subset of subclasses) that they work in if that class has dockets;

    5) The examiner works on the cases on their personal docket, preferably from oldest to newest.

    Usually, the only exceptions to the above process are if an examiner has a related application (then that examiner would get the related cases) or for “special” cases )e.g., petitions to make special).

    This process helps to keep the oldest cases moving & keeps examiners from “cherry picking” cases too much.

    Hope this answers your questions. If not, post more & I will answer what I can.

    Dennis, if necessary, please pass this along to Prof. Lemley


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