Request for Comments on Examination Time Goals

Jan. 30 is the written comment period deadline for the USPTO’s Federal Register Notice, “Request for Comments on Examination Time Goals.”  From the PTO:

The USPTO is conducting a comprehensive study of examination time. The USPTO plans to use the public feedback as an input to help ensure examination time goals accurately reflect the amount of time needed by examiners to conduct quality examination in a manner that responds to stakeholders’ interests.

Docs:

 

72 thoughts on “Request for Comments on Examination Time Goals

  1. 10

    Sorry for the long post. Just wanted to share my thoughts. I’ve worked both sides as an examiner (primary, signing my cases and reviewing juniors’ work) and a patent attorney. To put it bluntly, there are many examiners, including primaries, that do not do quality work. Some of this can be attributed to examiners who may not be examiner material, and I admit that it is difficult to cull the herd. But it’s been my experience that the biggest problem is the PTO does not allocate enough time to any aspect of patent training and examining. A new examiner (usually only having a bachelors degree with little to no critical reading or writing training) is put in the “training academy” for about one month where a senior examiner, who may or may not work in the new examiner’s art, attempts to distill all of the MPEP, PTO systems, and best practices (sometimes horrible practices) into four weeks. Then the junior is placed into their art unit with a SPE who has 8-10 other junior examiners to supervise, mentor, and train. This says nothing of the other projects a SPE must be involved with. Examiners work on a two week production period (a bi-week). This can result in anywhere from three to eight actions per junior examiner the SPE must review. Do the math, that’s 24-80 actions per bi-week a SPE must review! A SPE can’t possibly fully review 24-80 applications with corresponding Office actions for compliance with 101, 112a, 112b, 112f, 102, 103, double patenting, and/or proper allowable subject matter and classification per bi-week. (To the senior attorneys out there, imagine reviewing even half of a SPE’s workload for junior associates and keeping your billables up!) This says nothing of reviewing all the forms sent with an Office action, which examiners fill out (btw, examiners don’t have a legal assistant or word processing department), or teaching an examiner critical reading and writing skills. Sure, primaries in the art unit might be able to take on a junior, but primaries have their own dockets to manage with far less time to do it than a junior. As you can imagine most juniors do not have adequate training or feedback. In that environment, how is a junior supposed to know or learn how to apply Alice (Have you read the Office’s guidance to examiners on Alice? It’s virtually impossible to apply.), make coherent lack of written description or enablement rejections, analyze the specification for 112f, or learn good techniques for searching and mapping prior art? Not to mention, U.S. examiners are responsible for a far broader area of technological expertise (i.e., more of the CPC) than EPO examiners. Just keep in mind patent examiners aren’t trained or paid like patent attorneys, so let’s not expect perfection, especially since the PTO makes it virtually impossible for a junior to learn patent law and develop good techniques when examining. All of this is to give a bit of perspective on the life of an examiner. I fully support more examination time for juniors and primaries. But I agree that examination could be better and to really achieve better quality I think much more needs to change at the PTO than giving examiners more time.

    1. 10.1

      CD,

      Sorry for the long post.

      It is not the length per se, but the style of one massive block of text that is a bit foreboding, and that will keep all but the “so serous” from actually reading your post.

      Let’s try a (slight) re-write (excuse me if I misconstrue anything that you say – my comments in square brackets):

      I’ve worked both sides as an examiner (primary, signing my cases and reviewing juniors’ work) and a patent attorney. Just wanted to share my thoughts.

      [In a nutshell: Training up front, time throughout, and better culling once established.]

      Starting from the finish:

      Better Culling:

      To put it bluntly, there are many examiners (including primaries) that do not do quality work. Some of this can be attributed to examiners who may not be examiner material, and I admit that it is difficult to cull the herd.

      Segue to Time and Training: [you rather bunch these two together]

      But it’s been my experience that the biggest problem is the PTO does not allocate enough time to any aspect of patent training and examining.

      Adequate Training:

      A new examiner (usually only having a bachelors degree with little to no critical reading or writing training) is put in the “training academy” for about one month where a senior examiner, who may or may not work in the new examiner’s art, attempts to distill all of the MPEP, PTO systems, and best practices (sometimes horrible practices) into four weeks. Then the junior is placed into their art unit with a SPE who has 8-10 other junior examiners to supervise, mentor, and train.

      Adequate Time:(and SPE timing)

      This says nothing of the other projects a SPE must be involved with. Examiners work on a two week production period (a bi-week). This can result in anywhere from three to eight actions per junior examiner the SPE must review. Do the math, that’s 24-80 actions per bi-week a SPE must review! A SPE can’t possibly fully review 24-80 applications with corresponding Office actions for compliance with 101, 112a, 112b, 112f, 102, 103, double patenting, and/or proper allowable subject matter and classification per bi-week.

      (To the senior attorneys out there, imagine reviewing even half of a SPE’s workload for junior associates and keeping your billables up!) This says nothing of reviewing all the forms sent with an Office action, which examiners fill out (btw, examiners don’t have a legal assistant or word processing department), or teaching an examiner critical reading and writing skills.

      Sure, primaries in the art unit might be able to take on a junior, but primaries have their own dockets to manage with far less time to do it than a junior.

      (back to training)

      As you can imagine most juniors do not have adequate training or feedback. In that environment, how is a junior supposed to know or learn how to apply Alice (Have you read the Office’s guidance to examiners on Alice? It’s virtually impossible to apply.), make coherent lack of written description or enablement rejections, analyze the specification for 112f, or learn good techniques for searching and mapping prior art?

      Not to mention, U.S. examiners are responsible for a far broader area of technological expertise (i.e., more of the CPC) than EPO examiners.

      [(a little gratuitous whining)]:

      Just keep in mind patent examiners aren’t trained or paid like patent attorneys, so let’s not expect perfection, especially since the PTO makes it virtually impossible for a junior to learn patent law and develop good techniques when examining.

      [hint: for attorneys, it’s called professionalism and you take this on yourself – usually in your own time]

      All of this is to give a bit of perspective on the life of an examiner. I fully support more examination time for juniors and primaries. But I agree that examination could be better and to really achieve better quality I think much more needs to change at the PTO than giving examiners more time.

      [Time – apparently, for that proper training]

      1. 10.1.1

        anon, I was thinking of an analogy, military training. Send untrained recruits into combat and not only do they get killed, but they get their mates killed and FUBAR missions.

        There is a reason the British army, with so few troops, was consistently better than all comers for such a very long time: they were a well trained, professional army. Napoleon could not beat them. Nor the Germans in WWI (granted, the Brits soon went to conscription by necessity.)

        The EPO approached the problem of examiners like the British army — it is a professional force of highly trained careerists. The USPTO is more like a conscript army.

        1. 10.1.1.1

          Ned,

          I re-posted CD’s thoughts, because I thought that they were worthwhile to read, not because they were my thoughts.

          That being said, I do not like your analogy.

          The analogy fails because in principle part, examiners ARE professionals. They are paid to do what they do.

          If they cannot do what they are paid to do, then they not only deserve our disdain, they deserve to be dismissed.

          No one is making them take the money for the job that they are supposed to be doing.

          Is it a tough job?
          Perhaps.

          Is that an excuse for them not to do their job?
          Not a chance.

          Conscripts are there out of necessity and (largely) not choice. That is not just a small difference – that is a critical difference.

      2. 10.1.2

        anon: Thanks for the re-format. Not much of a social media poster here. Apparently my mind didn’t even register formatting. It helps.

        As far as your comments, you didn’t really misconstrue anything in my original post. But…

        “Segue to Time and Training: [you rather bunch these two together]”
        -That was the point. The PTO just doesn’t give enough quality time to any aspect from training to examining. We could make a whole new thread devoted to training at the PTO, but I wanted to focus on the time element in my post.

        “[(a little gratuitous whining)]”
        -It was, I suppose. The reason I mentioned it was because there seems to be a lot of comparison between EPO examiners and PTO examiners. Just trying to point out one of several big differences between the two that the patent bar may not be aware of.

        “[hint: for attorneys, it’s called professionalism and you take this on yourself – usually in your own time]”
        – I agree that there can be a serious lack of professionalism among examiners in all kinds of ways. But, there are many examiners who work a fair amount of voluntary overtime (i.e., their own time) to get their work done. That said, I wish more examiners would take their own time to better understand patent law from reading the MPEP (it’s astonishing how many examiners haven’t read any of the MPEP), case law, and the Office’s training/guidance. I partially blame the PTO, which is heavily focused on production, and also employee culture, which doesn’t really emphasize or “teach” new examiners how to act professionally.

  2. 9

    It’s funny how US prosecuters pine for the quality of EPO searches, and then become very quiet on the subject of examining time.

    Don’t worry guys. This is probably just a dog and pony show like Lee’s other quality initiatives.

    1. 9.1

      Well Ben –

      Those of us that were never Examiners have no way of knowing what a sufficient amount of time is to examine an application. My estimate would be much higher than the 20 hours I understand are allowed. But, I have no way of knowing.

      1. 9.1.1

        I just want to point out in TC 1700 I get 18 hours for all work from first action to dusposal, RCE, or appeal.
        Wasn’t clear if your comment re 20 hrs was per office action or per round.
        Regardless it’s not enough especially in view of our awful search tools and lack of non patent literature availably…And don’t even get me started on how you have to rely on the epo for translation and family member searching.

    2. 9.2

      You do realize (or should realize) that such is a separate issue and one of the reasons why you guys have a union, right Ben?

  3. 8

    Dear PTO:

    Regarding your request for comments on Examination Time Goals.

    Haste makes waste.

    All applications are not created equal.

    Do managers have daily, weekly, monthly or quarterly quotas they have to meet? X reprimands, Y atta boys, Z meetings. Why not let professionals be professionals and see if the cream floats to the top or not.

  4. 7

    The problem with USPTO is that if an examiner does quality work such as writing office action clearly and does thorough search so it takes longer to complete a case than other examiner who focus on finishing a case quickly with minimum writing and search.
    So performance rating is based on production. If your production is low, you will not get high rating on overall performance rating. For example, I got 2 on production, I got 4 on quality and 4 for others rating such as docket management for workflow and communication with applicant and internal coworker. But I will get only 2 rating for overall due to production is 2. And promotion is freezed for a year, unable to get bonus and award for other criteria such as DM.
    Rating 1 is unacceptable, 2 is marginal, 3 is fully successful, 4 is commendable and 5 is excellent. So the performance rating is based on production only not based on quality. I am discouraged to do quality work due to that rating criteria and more encourage to do production. But my office action writing and search history will go public in global dossier and other examiners can easily view at internal USPTO database or other countries or public and can access it so I am motivated/needed myself to do quality work to satisfy my work. So I am giving lots of my extra time by doing voluntary overtime instead of spending with my family and enjoy my life. Workload is consumed by 90% of my life. I have to change my ego to do quality work and focus on production I can’t effort anymore since I have been working at PTO for almost 3 years. I need to balance my time for quality and production. Thanks for reading. I really wish to increase examining time to get quality work. And USPTO SPE should give the examiners’ performance annual rating based on quality as well instead of based on only production. This based on my experience and feeling.

    1. 7.1

      Thanks Zarni. Obviously there needs to be emphasis on quality production. The two go hand-in-hand, and low quality work simply should not be accepted.

      What do you think about the rankings of USPTO as the best agency to work-for in the U.S. Government. That suggests to me that most examiners are not feeling the same overwhelming problems that you are feeling.

      1. 7.1.1

        The USPTO hasn’t been The Best Place to Work for awhile. Last year it came out 19th (out of 300+ in its category).

      2. 7.1.2

        I wish to improve a few things at PTO. For example, as a Junior examiner, I will need to confirm allowance from primary but there should be limit for example the primary examiner has to reply within a few days instead of a few weeks or so to give search strategy or to confirm allowability.
        How can I persuade my primary and SPE to help me really? I am afraid to speak up that I want to change my primary who I am working with to my SPE. Because other primary I want to work with but my SPE doesn’t want me to work with her. I wish to get consultation time for junior examiner as well. And also more time for interview since interview preparation takes time too. For example 2-3 hours for interview case.
        Primary examiners have different personality so who I need to improve my dealing as well. Junior examiner could enjoy here at PTO if his or her SPE and primary are helpful. I think who enjoy or give the best place to work here at PTO could be SPE and primary examiners or GS-12 and above. I don’t think so for Junior examiner who are GS-7 to 11 or 1-4 years experience in PTO. I grantee no examiner will say the best place to work here for newer examiner less than 1 year based on my knowledge and experience. Thank you for your comments.

  5. 5

    The things that need to get said here is how patent prosecution has changed since 1970. Cause that was when the baseline assumptions for examination time were set in stone. If prosecution is still fundamentally the same, then we could continue using the same system for compensating examiners, right?
    Its not though. In 1970 examining consisted of flipping through stacks of printed patents to find refs and then checking some boxes on a form for a typist to type up the appropriate form paragraphs with the blanks filled in. Then the examiner would sign it and send it to the mailroom. The file wrapper for each app included a search notes list so examiners could keep track of which shoes they had already searched through. The search notes form today is usually only used to write “see EAST history”. Some examiners write more on it but nobody reads it anymore. Dennis could you find and post some office actions from the 70s and do like a side by side comparison or an evolution spread. Also, KSR significantly increased the amount of actual writing that examiners have to do. TSM practice fit in with the old form paragraph/typist way of doing actions, which was relatively easy to automate in software, but KSR blew it up, so now theres a lot more clicky clacky from examiners.

    1. 5.1

      Thanks Ed. Good points – I’ll see about a comparison.

      I would like to see less prose and instead have something more like a claim chart that shows the location of each limitation in the prior art.

  6. 4

    Isn’t now the time to focus on shrinking the yuge Federal bureacracy?

    Just cut the Examining corp down by 90% and make the remaining 10% work like real Americans for a change.

    Oh but wait! The PTO serves the wealthiest people in the country. It’s much better to cut services for the poorest people first. After all, it’d be absolutely horrifying to listen to a bunch of rich white people in the top 1% cry about their “share news with grandma on the Internet” patents not getting examined quickly and properly. The worst thing ever, really.

    So kiss your Medicaid goodbye, little lazy sick people! The great news is while you’re lying in bed dying you can order a used copy of Atlas Shrugged for, like $3. Enjoy!

    1. 4.1

      You do realize that innovators themselves already pay for the entire USPTO, right?

      Your smarminess is no match for your 1d1ocy.

      1. 4.1.1

        You do realize that more people are going to get sick and die as a direct result of losing their health care, don’t you?

        Of course you do. After all, you “h@te” Emperor Tangerine. You told everyone so!

        But it’s all good. The ultrarich will get their tax break and the goodness will trickle down. Right? Sure it will.

        1. 4.1.1.1

          “You do realize that more people are going to get sick and die as a direct result of losing their health care, don’t you?”

          Can you stop screaming about how the sky is falling for one minute and let the gubmit act?

    2. 4.2

      “Real” Americans do the work of 10 people? Who are you, Gaston from Beauty and the Beast? “When I was a lad I ate 4 dozen eggs every morning to help me get large. And now that I’m grown I eat five dozen eggs. So I’m roughly the size of a barge.”

      I really am interested in people’s opinions on this matter of more time for Examiners. UNFORTUNATELY, every article lately is just a ranting board for MM to go off on all sorts of tangents and incoherent insults.

      1. 4.2.1

        Lately…?

        He is almost at his ELEVEN year anniversary of his same tactics.

        This was objectively documented in the thread of the last call from Prof. Crouch for a better “ecosystem.”

        There is NO bettering when the blight is not dealt with.

  7. 3

    There seem to be three possibilities.

    1. The USPTO has avoided increasing examination time for its own advancement.

    2. The USPTO has avoided increasing examination time for the enrichment of stakeholders.

    3. We are at, or beyond, the optimal amount of examination time.

    Does anyone actually believe #3?

      1. 3.1.1

        So what do you think?

        Are we at or beyond optimal examining time, and if not: why has the PTO avoided increasing examining time for so long?

        1. 3.1.1.1

          That’s a “you” perhaps problem that you and your union should be ironing out with the Office management.

          Stop trying to make your internal problems into the problems for me and my clients.

          1. 3.1.1.1.1

            You suggest that there are alternatives and then refuse to provide any.

            Do you ever consider whether your discussion techniques could push more people into being anti-patent?

            I honestly cannot think of how an anti-patent activist could better hurt the cause of IP rights within this small forum than fill it with your condescension and drivel.

            Keep up the good work.

            1. 3.1.1.1.1.1

              Do you ever consider whether your discussion techniques could push more people into being anti-patent?

              No.

              I have provided models for changing the examination system, by the way Ben.

              Maybe instead of kvetching, you want to try to understand the point that I am making.

    1. 3.2

      As an Examiner –

      Like most employees, we do what is required of us. We adjust our work habits and schedules to match the time allotted. So most examiner hit the required 95-110% production, and it probably looks like everything is hunky-dory. If we were given more time, we would still settle in on that 95-110% production, and presumably quality would go up a bit. If we are given less time, we will still settle around that 95-110% production mark, and find ways to adjust (cut corners) to achieve the required goal.

      1. 3.2.1

        As I understand it (not to speak for AAA JJ, who is quite capable), that WAS attempted and failed miserably.

  8. 2

    As long as the “do logic … on a computer” crowd is permitted to bury their alleged “improvements to computing technology” underneath five paragraphs and a preamble describing “a method for predicting DVD discount offers”, there is no way that the examination of those claims will ever be both “efficient” and worth the paper it’s printed on.

    The US patent system is a farce, and it’s a farce for one simple reason: inventing has become synonymous with lawyering. That’s what happens when you grant patents on logic and information. And yes this disaster was entirely predictable.

    1. 2.2

      inventing has become synonymous with lawyering

      You confuse (not surprisingly) good lawyering working with protecting innovation.

      Maybe less whining from you concerning the form of innovation most accessible to the non-wealthy (as you yet continue your agenda inexplicably aimed at the wrong target).

  9. 1

    I hope it is appreciated by the PTO that adequate prior art searching and its application is by far the most important quality aspect of application examination. The very high percentage of IPRs in which much better prior art is cited [too late for normal prosecution] cannot be ignored. Too many far less important alleged quality issues seem to have been stressed. I also have some concern that some examiners are now spending too much examination time on 101 rejections, to the detriment of prior art searches, leading to less quality much higher allowance rates by those examiners when their 101 rejections are eventually rebutted.
    Of course applications in which unambiguous claims specific to the disclosed invention are not even filed by applicants until after the first action makes effective single searches difficult.

    1. 1.1

      Two changes that would greatly improve prior art searching. First, don’t limit the search to patent-based publications and use general web-based search tools such as Google. Second, submit written questions to the applicant for additional information, such as timing of first public events, etc.

      1. 1.1.1

        1. Non-Patent Literature searches are encouraged by the Office.

        2. These exist and the response is invariably “The requested information is not readily available.”

        1. 1.1.1.1

          Regarding 1, I rarely see NPL cited by the office.

          Regarding 2, that’s the fast lane to inequitable conduct, so… why wouldn’t the Office use these more often?

          1. 1.1.1.1.1

            2. The office avoids these requests because of the burden it could put on thr applicant. I believe the office requires a SPE to sign off on any such request.

            1. 1.1.1.1.1.1

              The Office had nothing to do with the “putting the burden,” Ben.

              Try reading how Congress set the rules of the game.

    2. 1.2

      The fallacy of “course applications in which unambiguous claims specific to the disclosed invention are not even filed by applicants until after the first action makes effective single searches difficult.

      You are (or should be) aware of both the no new matter added and the examination is on the entire application facets, right Paul?

      1. 1.2.2

        He should also be aware your expectations of the PTO and examiners are literally detached from reality. (I.e., denial of the tradeoffs between time, price and quality, expectations that examiners ignore their employer’s employment requirements, ect…).

        1. 1.2.2.1

          Ben,

          Are you still trying to make your problems into the problems of my clients?

          You do realize that you cannot win with that ploy, eh?

          1. 1.2.2.1.1

            Your refusal to recognize reality does nothing to advance your clients’ interest.

            I think anon practices in Lake Wobegone, where all the women are strong, all the men are good looking, and all the civil servants are tireless saints.

      2. 1.2.3

        Anon, “new matter” is of course not the issue here, and are you are aware that there is no examiner obligation to conduct prior art searches against UNclaimed features merely disclosed in the specification?

        1. 1.2.3.2

          Which is why the EPO provides better searches 90+% of the time — they seem to actually search for the invention, not just the claims.

          1. 1.2.3.2.1

            Well put PatentBob.

            Note as well that this is a topic that I schooled 6 on (who seems to have come around on the issue, even if he does not want to credit me for enlightening him).

            ;-)

          2. 1.2.3.2.2

            EPO gets to search the invention because they get a boatload more time to search than USPTO examiners get.

            Unfortunately, the quality of their action writing is poor. The logic leaps and handwaving I regularly see help no one.

    3. 1.3

      Paul, There seems to widespread agreement that “compact prosecution” does not work reliably for all applications. The first round only flushes out issues that need to be addressed in a second search/office action. The applicant should be able to pay for such a second search without further ado. That is what RCE’s were first intended to do, actually, but they were structured so that the examiner had an incentive to play games and force an RCE. What we need is to fix the system so that the initial search fee automatically pays for two searches which the examiner must conduct unless he allows the case first. The second search, conducted after a first OA and Response, will inevitably be much better than the first.

      1. 1.3.1

        This wouldn’t fix everything, but it’d be a nice step in the right direction.

        Good luck getting that past the bottom feeders.

      2. 1.3.2

        Ned, yes, a second prior art search IS badly needed when the claims are drastically amended after the first action to add, and claim novelty over the art for, new claim features that were not ever claimed before. [Otherwise, why should should it be needed?] But, how often does such a second search occur, and does the PTO provide examiner time for it?

        1. 1.3.2.3

          Second searches are sometimes needed, but rarely performed, when the Examiner did not understand (or pretends such) the claims or when the Examiner chose to apply Broadest UNreasonable interpretation in order to send out a set of papers that look like an Office Action within the allotted time. More often than not, instead of doing that second search, the Office will dig in and allege that the cited documents show things that the clearly do not show in a Final Office Action, thereby forcing an Appeal or RCE or petition filing with the six month clock ticking…

          1. 1.3.2.3.1

            Les, one part of that suggests a needed quality-check item – consequences for examiners alleging that a claim element is taught by a cited reference when the PTAB holds that it is not, especially with no OA indication of WHERE it is taught in the cited reference.

            1. 1.3.2.3.1.1

              Indeed. I have often wondered what that supervisory signature on an OA means. As near as I can tell, it means they checked that all the pages have words on them and that most of the pages that should be between page 2 and the last page are present. I have also wondered what review or supervisory activity takes place when the Board reverses a rejection.

              The Actions I was thinking of do say where the element is allegedly found. The issue is that while a word present in the claim is also found in cited paragraph 124, the context is completely different and the actual element is not there.

              1. 1.3.2.3.1.1.1

                Lol – just pointed that exact thing out today to an examiner (apparently, the key word search without bothering to read the specification for that context is still alive and well in some areas of the Office.

            2. 1.3.2.3.1.2

              The best outcome of this initiative would be more examining time paired with a significant increase in quality requirements / error consequences.

              But I don’t think that’ll happen unless the stakeholders ask for it.

              1. 1.3.2.3.1.2.1

                How about give the stakeholders what they are already asking for (and paying for) and figure out your internal problems – like, internally…?

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