by Dennis Crouch
In recent years, the United States Patent and Trademark Office (USPTO) has undergone a significant shift in its examiner composition, with real implications for patent prosecution strategies.
Our data reveals a dramatic drop in the percentage of assistant examiners over the past decade. Prior to 2015, over 35% of patents were examined by assistant examiners. Since 2020, this number has plummeted to less than 20%. But these assistant examiners did not simply disappear. For the most part, they rose in rank and became primary examiners. In other words, examiners are staying with the USPTO longer, and the office appears to be successfully identifying and hiring potential examiners who are both capable and committed to longer-term careers at the USPTO. Good stuff!
There are several key differences between primary and assistant (secondary) examiners.
1. Authority and Independence: Primary examiners can sign their own office actions and make final decisions without supervisory review, while assistant examiners typically need oversight. See, Shine Sean Tu, Patenting Fast and Slow: Examiner and Applicant Use of Prior Art, 38 CARDOZO ARTS & ENT. L.J. 391 (2020); and Shine Sean Tu, Patenting Fast and Slow: Examiner Rejections and Applicant Traversals to Non-Prior Art Rejections, 2021 MICH. ST. L. REV. 411 (2021).
2. Experience and Expertise: Primary examiners generally have more experience in examination procedures as well as looking at inventions within their technical field.
3. Negotiation Flexibility: Primary examiners often have more leeway to negotiate with applicants during interviews and throughout the examination process. In addition, primary examiners will typically have the authority to come to some agreement — dealmaking power.
All things being equal, it is generally preferable to have a primary examiner assigned to your patent application. Here’s why:
1. Direct Negotiation: When we view patent prosecution as a negotiation, it’s advantageous to deal directly with the decision-maker. Primary examiners can typically do so without needing to consult supervisors.
2. Efficiency: Historical data suggests that primary examiners tend to reach the crux of prosecution more quickly than their assistant counterparts. What this means is that the first office action is less likely to be a total waste. Although not an exact corollary, Professor Tu’s research shows that high-volume examiners (often primary examiners) issue patents in about 1.64 years on average, compared to 5.85 years for low-volume examiners.
3. Higher Grant Rates: Bottom line is that patentees are more likely to get to a ‘yes’ with primary examiners. Our recent data corroborates this, showing a positive correlation at the art unit level between grant rates and the percentage of primary examiners. (Using 3 year grant rate data from Patent Bots)
It’s important to note that patent examiners typically face more criticism for erroneously allowing a patent than for erroneously refusing one. Because assistant examiners have over-the-shoulder watchers, this risk asymmetry likely influences assistant examiners against more freely allowing patents to issue.
What are your thoughts here — how have examiners changed for your clients over the past several years, and how has it affected your prosecution strategies?
Not shown (even for primaries): kicking 101 examination to a ‘centralized’ group; notably, and in disregard (shockers, I know) to full transparency, I have had on more than one occasion, an examiner tell me that he/she cannot discuss the 101 rejection as it was written by a group other than the examiner.
Luckily, in one instance, the leader of that group happened to be the next level supervisor of my examiner.
Those that think that SAWS was the only shadow operation are very very wr0ng – as I also noted in how the Office phrased its “hands-in-the-cookie-jar” announcement of retiring SAWS.
Has anyone else experienced many such examples of “kicking 101 examination to a ‘centralized’ group” even from primary examiners? I know there are centralized special examination groups now takng and handing reissues, Hyatt applications, and maybe a few other things, but not this unless we are talking about 101 isssues asserted by “quality control” examiners after allowances?
The increased and faster grant rates from this increased percentages of office actions coming from primary rather than assistant examiners has several reported PTO incentives. But are some allowances made of poorly written application claims to try to force those applicants to file RCEs with better written claims?