From Agent to Examiner and Back Again: Practical Lessons Learned from Inside the USPTO

By Brian Downing
January 16, 2021

“Understanding the unique lens through which each examiner is viewing the application and prior art is critical to working effectively with Patent Examiners.”

https://depositphotos.com/74355197/stock-photo-lessons-learned-just-ahead.htmlAs a Patent Agent, the work product coming out of the U.S. Patent and Trademark Office (USPTO) seemed random to me. This article shares what I learned as a USPTO Patent Examiner that lifted the veil and shed light on that randomness.

As a Patent Examiner I learned a powerful lesson: the approach that a Patent Examiner takes in interpreting claim language is learned by “on the job” training while working with USPTO trainers and other experienced USPTO examiners. The USPTO does not give new Patent Examiners detailed training on how to interpret claim language. Understanding the unique lens through which each examiner is viewing the application and prior art is critical to working effectively with Patent Examiners. Some Examiners interpret very broadly and allow fewer applications, while other examiners interpret more narrowly and allow more applications.

What I Learned at the USPTO

  1. Examiner Production System

The USPTO production system is measured in two-week intervals (i.e., biweeks). Examiners typically have more time at the beginning of the biweek and less time at the end of the biweek. The Examiner’s production system encourages a case to be disposed of (e.g., allowed, abandoned, or continued). For an interview, the Examiner has one hour for the entire interview process (e.g., schedule, prep, perform interview, and create summary).

The Patent Examiner position felt like an assembly line to me. There was a lot of pressure to get work products out the door while meeting a minimum quality standard. In my experience, the Examiner’s performance is mostly judged on how much work they get out the door and not as much on the quality of the work, so long as it meets the minimum standard. As an Examiner, there is no reward for going above the minimum standard in quality but there are rewards for getting more work products out the door.

  1. Retention

In my USPTO patent training lab, half the new Examiners resigned within the first year. I know of no other employer of college educated professionals with this retention rate.

  1. Quality

A big surprise for me was that the people within the USPTO are aware of the current quality levels. During training, lower level management made comments indicating that the approach to quality will not change without Congress’ intervention.

  1. Patent Training Academy

The USPTO trains the Examiners at the Patent Training Academy. I found the USPTO training to be so high level and generic that it did not effectively teach the practical aspects of patent law.  I believe this lack of practical, technology-specific training has contributed to the diversity of work products coming out of the USPTO.

  1. How Restriction Requirement Petitions are Handled

When petitioning a restriction requirement, a Technology Center Quality Assurance Specialist (TQAS) reviews the restriction to determine if the Manual of Patent Examining Procedure (MPEP) was followed. The TQAS will evaluate the validity of the restriction requirement based on the threshold of the MPEP being adhered to from their viewpoint. None of the TQAS I met used the “abuse of examiner discretion” threshold. In practice, the current Cooperative Patent Classification (CPC) system is so fine-grained with classification numbers that it does not take much effort for the Examiner to make a case that the claims span different classification numbers, thus making the restriction valid.

  1. The Permanent Primary Examiner

Once an Examiner becomes a Primary Examiner, the Examiner can sign their own work. The Primary Examiner designation is permanent and cannot be revoked. I do not believe it is in the best interest of the inventors using the USPTO to allow the Primary Examiner to basically work unchecked. There are quality assurance departments within the USPTO, but they do not in my opinion thoroughly evaluate enough Office Actions to be effective at weeding out bad work products.

  1. Art Unit Assignment of Applications

The process the USPTO contractors use to assign patent applications to art units appeared to me to be somewhat random. The USPTO has a system to reassign applications to the correct art unit when the application is initially assigned to the wrong art unit, which I used significantly more frequently than I thought I would.

  1. Patent Search Tools

The main patent search tool (EAST) is keyword-based and requires the Examiner to create a keyword description of the invention to search. Google Patents and Google Scholar are included in many examiners’ favorite search tool set, especially for non-patent literature (NPL). The other artificial intelligence (AI) based search tools (e.g., ip.com) I used at the USPTO did not provide meaningful results when pasting in an entire claim the majority of time (maybe ~5% of time was accurate) but when they were right, they were very accurate. When I narrowed the search down to a handcrafted search string, I saw significant improvement in the AI based search tools.

  1. Leadership

I have been impressed with USPTO Director Andrei Iancu addressing problems with the patent system. When Director Iancu was first appointed, I was working as a Patent Agent. I was impressed when Director Iancu started addressing the 35 U.S.C. § 101 issues. Later as a Patent Examiner, Director Iancu started addressing internal USPTO issues like an outdated IT system and search tools not progressing at the same rate as the prior art is growing. One thing Director Iancu said at a USPTO employee meeting that resonated with me was that the Patent Examiners should “issue patents with the appropriate scope”.

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How I Apply What I Learned at the USPTO

Conduct Interviews for Rejections and/or Objectionsa.

a. Meaningful Agenda

Consider creating a meaningful interview agenda (e.g., summary of arguments, proposed amendments, etc.) that gives the Examiner time to prepare a meaningful response during the interview. As the agenda adds to the file wrapper, the agenda may hurt the client if the patent later gets litigated.

b. Treat Examiners like Humans

Remember, the Examiner is a human being who is under challenging time constraints and who is determining the USPTO’s position. Try to keep a friendly tone and be appreciative of the public service the Examiner is providing (which can be extremely difficult when the quality of the rejection is less than expected). Being positive and appreciative may help with some Examiners. I’ve found that some of the best prosecution practitioners have very good people skills and can adapt to the Examiner with whom they are working. Other examiners have told me stories of practitioners becoming aggressive and yelling. This almost never works. Emotional outbursts usually only serve to stall the application at the point it was at before the outburst.

I am very careful not to make the tone of the interview adversarial. Making the interview adversarial will most likely cause the examiner to dig in their heels. The examiner has taken a position and it is more fruitful to understand why the examiner had adopted that position. I respectfully ask what the examiner is thinking and how he/she got to that conclusion. I try not to explicitly mention appeal. If I am confident in my position, I would say I will look at my options and speak with others.

c. Two Key Aspects of Understanding the Examiner.

First, focus on understanding the Examiner’s point of view. For the points of disagreement, explain in simple engineering/scientific terms the difference, e.g., why X and Y are different, and, if the Examiner remains unconvinced of the position, ask the Examiner why they consider X and Y the same. If the Examiner is maintaining their position that X and Y are the same, ask the Examiner how to clarify the difference between X and Y. After creating a good rapport with the Examiner, some Examiners may suggest claim language to distinguish over the prior art.

To determine if the examiner is junior, a junior examiner will have an additional signature at the bottom of the Office Action. If working with a junior Examiner, try to determine if someone above them instructed them to take a certain position in the Office Action. If a junior Examiner was instructed to take a certain position, there is no hope of getting them to change the position without working with the person who instructed them to take the position. For example, beginning examiners are typically brought in at the grade GS-7 unless they have an advanced degree (e.g., JD, PhD, etc.). A GS-7 Examiner is not expected to recognize 35 U.S.C. § 101 rejections. Thus, a GS-7 Examiner cannot withdraw a 35 U.S.C. § 101 rejection without consulting with the person who flagged the 35 U.S.C. § 101 problem.

For the second key aspect, understand how narrowly or broadly the Examiner interprets the claims. This is the lens I mentioned in the introduction. Some Examiners interpret broadly and allow fewer patent applications, while others interpret narrowly and allow more patent applications. Some non-attorneys have trouble with the gray area of claim interpretation and most examiners do not have a law degree. When I was in training at the USPTO, I would go around and around with my trainers about whether a prior art taught a claim limitation. It felt like the trainer was ignoring my analysis and did not understand the technology. I had a light bulb going off moment when I realized we have different interpretations of the application and the art. Working daily with Patent Examiners behind the scenes of the USPTO taught me that each Examiner interprets differently. Once I learned this interpretation lens for each person that had to sign my work, it made getting work out the door much easier. The same concept can be used during prosecution when dealing with the examiner.

d. Examiners and Pure Legal Arguments

Since most Patent Examiners are not attorneys, rock solid legal arguments are not as persuasive to Patent Examiners as they would be when read by another attorney. When arguments are not tied to the MPEP, these non-MPEP arguments are likely to be meaningless to an Examiner. Examiners have very little training on how to interpret case law. The appeal board consists of attorneys; thus, legal arguments will be more persuasive during appeals.

e. When to Include Inventors in Examiner Interview

I have heard multiple Examiners say that they would like to talk with the inventors during examiner interviews. My fellow practitioners have told me about how successful interviews have been when including an independent inventor. To determine if the inventor(s) should be included in the interview, when I have inventor(s) that I trust to stay on script along with an assignee that understands the risk/reward of letting the inventor(s) talk with the Examiner, my preliminary plan when scheduling the interview is to tell the Examiner that when I was an Examiner, I heard some Examiners say they wanted to talk with the inventors and ask the Examiner if they would like me to include the inventors in the interview. If the Examiner says they would like the inventor(s) in the interview, I would include the inventor(s); otherwise, if the Examiner says no or is neutral, I would not include the inventor(s) in the interview. Having the Examiner associate a person with a patent application could help in advancing the case.

f. Bring in the Primary Examiner or SPE

If the Examiner is not being reasonable and I have a strong case, I may ask if we can bring in the patent Examiner’s Primary Examiner or Supervising Patent Examiner (SPE) to give a second opinion. If the Primary Examiner/SPE discussion is not productive, then I consider going to the Technology Center (TC) Director. Though the MPEP has no procedures that involve calling a Primary Examiner, SPE, or TC Director, I have found the USPTO leadership cares and wants the Examiners to do the right thing. As with any process that is not laid out in the MPEP, this could backfire and/or be met with an unhappy Primary Examiner, SPE, or TC Director. I would in most cases at a minimum discuss the issues with a SPE before filing an appeal.

  1. Restriction Requirements

There is a better chance of getting a restriction requirement overturned than I thought. At the USPTO, the highest-ranking person’s opinion is given deference compared to opinions of those below them, and, in this case, a TQAS opinion overrules that of the Examiner.

  1. Drafting

a. Help Examiner Understand Problem Solved

If possible, help the Examiner understand the problem solved, which may aid the Examiner in prior art searching by being able to look at how others possibly solved the problem addressed by the current invention(s). As an Examiner, I examined applications that were so generic I applied broad prior art and the true invention did not come out until after the first amendment. I have been advised by a patent attorney with litigation experience that the problem statement needs to be broader than the broadest claims. Also, the problem statement needs to be updated if the claims are amended to become broader.

b. Describe Inventive Concept in a Few Sentences

Unless trying to make the application difficult to find in a patent search (e.g., a non-practicing entity patent application wanting to create a trap for a patent infringer to fall into), consider creating a sentence or two in the summary that describes the inventive concept (i.e, a short summary of what makes the invention novel) to help the patent Examiner in searching. I have been advised by a patent attorney with litigation experience that the inventive concept statement needs to be broader than the broadest claims. One should always update the inventive concept statement any time the claims are amended to become broader.

c. Work in Standard Keywords

Consider using the standard keywords in the patent application. In one class, IPWatchdog Founder and CEO Gene Quinn spoke of drafting using “a cup” versus “a liquid-containing vessel”. In this case, consider using “cup”, as that will be most likely be how the examiner and a potential infringer will search. Overall, I’m trying to give the Examiner the information they need to expedite examination instead of making them guess about the application and possibly go down a wrong path. Even if the client wants the invention described as a liquid-containing vessel, try to get the client to put something like “before liquid-containing vessels, liquids could not be heated by a cup”.

d. Consider boilerplate language to interchange components

Consider adding boilerplate language stating that components and/or methods can be interchanged, which may aid in finding support for claim amendments that avoid prior art during prosecution. For example, some applications that I read defined a method and then a generic computer but never explicitly taught the method could be performed on the generic computer. I have also seen applications where there are multiple embodiments, with each embodiment being a slight variation, but the embodiments are not tied together. As an Examiner, on multiple occasions I would find a claim limitation in separate embodiments of a prior art teaching, but the prior art teaching lacked a bridge to combine those limitations which did not allow me to reject the claim with this prior art teaching. Though a little dated, an example of wording that can be added to an application that helps tie various embodiment together includes the following:

All features disclosed in the specification, including the claims, abstract, and drawings, and all the steps in any method or process disclosed, may be combined in any combination, except combinations where at least some of such features and/or steps are mutually exclusive. Each feature disclosed in the specification, including the claims, abstract, and drawings, can be replaced by alternative features serving the same, equivalent, or similar purpose, unless expressly stated otherwise.

This passage allows support for any permutation of the existing applications. As an Examiner, I rejected multiple patent application amendments due to the amendments not having support within the patent application. Some practitioners disagree with adding an interchangeability boilerplate, as it could possibly be considered an admission that the interchangeable components and/or methods are obvious variations; thus, prior art teaching a variation of a feature may be considered to render obvious a claim to the feature.

Improve Quality at USPTO

The following are ideas I believe will help to improve the quality of the USPTO work products.

  1. Standardized Office Action Claim Mapping Format

Currently, Patent Examiners perform claim mapping in any format they choose, so long as it can be added to a Microsoft Word document. I believe a way to improve quality is to require a standard claim mapping format that has every limitation mapped out. For example, a tool that copies the claims into the Office Action and prompts the Examiner to highlight a part of the claim, which opens a window so the Examiner can insert the prior art reference citation. This would make it easier to flag applications that have broad mappings (e.g., “claims 1-5 are rejected under 35 U.S.C. § 102 as anticipated by Doe pages 5-20”) for quality assurance to review. Also, as artificial intelligence becomes incorporated into patent examining, a standard data format will allow more accurate models to be trained thus giving more accurate results.

  1. Requirements to Maintain Primary Examiner Designation

I believe one way to improve quality is to establish a mechanism to regularly review the Primary Examiner’s status and withdraw Primary Examiner designation for rogue Examiners. From my experience, it appears some Primary Examiners will take short cuts by only mapping to the claim limitations they feel could be the most novel and ignore the limitations they believe are well known in the art. This shortcut makes the practitioner’s prosecution very difficult, since the practitioners typically do not know the given art as well as the Patent Examiner.

  1. Reduce Examiner Turnover

The USPTO wastes a tremendous amount of money to train Patent Examiners who only stay with the USPTO for a short amount of time. I would like to see the USPTO transform itself into an organization that can attract and retain the top talent across the industries the USPTO supports. An easy way for the USPTO to improve quality and/or reduce the cost of a patent is to reduce the wasted training cost of Examiners by improving retention.

Final Thoughts

This is my personal perspective of the USPTO. I’m sure others will have a different opinion and may find my opinion off mark. It is my hope that this article will give my fellow patent practitioners a few more tools in their toolbox to assist in working with the USPTO. It is not my intention for this article to be the definitive way to work with the USPTO in every case.

Please share your experiences in the comments below.

The Author

Brian Downing

Brian Downing is a freelance patent agent and former artificial intelligence (AI) patent examiner (AU 2121). Before transitioning into patent law, Brian had over 17 years experience in analog and mixed signal integrated circuit (IC) design, electronic design automation (EDA) software, software development, web application development, and motorsports. Brian specializes in electronics, software, and artificial intelligence patent preparation and prosecution. Brian's passion is helping start-ups obtain patents. Brian loves the startup environment, where passion is abundant, paradigm shifting technology is everywhere, quality is admired, and every penny gets stretched to it's limits. Having been in the seat of the inventor and the patent examiner, Brian is efficient at going from an inventor's idea to an issued patent.

Besides patent preparation and prosecution, Brian's interests include using and developing software tools to speed up and improve quality of patent drafting and patent prosecution. Additionally, he enjoys applying big data techniques to patent data and applying a common sense filter to find the best path forward for clients.

Brian holds a Master of Engineering from Northern Arizona University, Bachelor of Electrical Engineering from Georgia Institute of Technology (Georgia Tech), and an Associate of Science from Isothermal Community College.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 46 Comments comments.

  1. randoexatty January 16, 2021 3:13 pm

    Thank you for the article. I think every mixed-practitioner (with both examiner / attorney experience) has different perspectives, so it’s good to hear lots of them. As an attorney turned examiner, I was surprised by the number of highly qualified examiners that do phenomenal work product. Yes, there are plenty of average and below average examiners, but often as attorneys we only remember the ones who gave us a hard time or made nonsensical rejections. So when I met some of those examiners that were experts in their technology and wrote thorough, thoughtful rejections, I was a bit caught off guard!

  2. Primary examiner January 17, 2021 7:19 am

    Few comments of my own (Ive been at the PTO for over 5 years):

    “As an Examiner, there is no reward for going above the minimum standard in quality but there are rewards for getting more work products out the door.” The new performance appraisal plan actually encourages examiners to produce high quality office actions. In order to get a maximum rating on the plan, the quality needs to be of a high standard – so I would say there is an actual (tangible) reward for going above the minimum quality standard.

    “In my USPTO patent training lab, half the new Examiners resigned within the first year.” In my training lab, only 1 person out of 11 (or 12) resigned within the first year. I think this number varies among technical areas.

    “I do not believe it is in the best interest of the inventors using the USPTO to allow the Primary Examiner to basically work unchecked. ” This statement is incorrect – the Primary Examiner is not left to work “unchecked”. If the Applicant files an appeal brief for example, if the Primary Examiner’s office action is deemed to be poor/incorrect, the Examiner will then have to redo the Office Action without getting any time or counts for it. Smart, ethical, and organized, Primary Examiners do not want to do this- the Primary Examiners that I do know (with a few exceptions) try their best to produce a high quality Office Action, in order to reduce the chance of having to redo the work product during their own time (and without getting any counts for it) at a later date. The Examiner’s SPE also reviews a sample of the Examiner’s work product (including Primary Examiners) on a quarterly basis. The Primary Examiner’s work does get checked.

    Throughout my years at the PTO, my biggest concern is the high number of SPEs that are basically paper pushers and “number managers”, without having any people skills, motivational skills or desire to motivate their Examiners to produce high quality work products, and indirectly help with employee retention.

  3. George January 17, 2021 10:42 am

    Excellent! Thanks for the insights! Congress needs to be made aware of all of this, because I am sure they don’t know any of this! It’s UNACCEPTABLE and INEXCUSABLE!

    We cannot have apathy, cynicism, self-interest, incompetence, arrogance, and possibly even corruption going on at the USPTO! This will have devastating consequences for our innovation economy and will only lead to the complete extinction of independent invention in this country! How can you protect inventors and inventions, when rules are no longer hard and fast ‘rules’? When rules are just ‘suggestions’ to be interpreted by individuals having no legal training or much of any training or experience? What kind of ‘legal system’ is THAT? It’s worthless!

  4. Paul Cole January 17, 2021 11:32 am

    Exceptionally interesting and useful article.

    Under drafting: a. Help Examiner Understand Problem Solved. b. Describe Inventive Concept in a Few Sentences .

    If we go back 200 years, we find an explanation of Mr Justice Washington in Evans v Eaton 20 U.S. 356, 399(1822):

    It is, then, a patent for the peculiar principle of his machine, for its new mode of operating, that Oliver Evans asked for and received. That a new modus operandi, by a new combination of old instruments or machines, so as to produce either a new effect, or
    an old effect in a new way, is the proper subject matter of a patent, appears from numerous authorities, and may be considered as a settled principle of
    the patent law. It was on this principle that Watt’s patent for his improvements on the steam engine, which made .so much noise in Westminster Hall,
    and produced such important effects, was finally supported and established.”

    It is astonishing, with this and so much subsequent jurisprudence, that there are practitioners who when drafting new applications omit to focus on and highlight the new effect or function that is being achieved, requiring much detailed study before these significant elements can be extracted from a mass of less significant information.

    And for those who are not aware of this fact, Oliver Evans was one of the earliest and most outstanding US inventors and his life and achievements are well worth studying.

  5. Anon January 17, 2021 1:59 pm

    Yet again, Mr. Cole, you speak as if in a vacuum about patent practice.

    Your desire for “perfect application” will certainly FAIL when one – as is a must – operate in the real world.

    You may think that you are doing everyone a favor.

    You are not.

    The bottom line is that the art of patent writing does not support the type of Pollyanna approach that you advocate.

    While it is certainly an excellent skill TO write as indicated in the parent article, as well as to be able to provide SOME focus on a compelling story, and INCLUDE (but not stress so as to induce patent profanity) a spectrum of new function/achievement that should reflect not just the typical 3/20 claim structure, but potential fallbacks.

  6. David Lewis January 17, 2021 6:06 pm

    Dear George,
    One thing that you may not fully appreciate is that from the point of view of Congress, they want to see an “efficient” Patent Office, and efficiency is measured in terms of how many applications processed verses money spent. This leads to a system where the Examiner is rated primarily on how many patent applications are examined, and only looks at the quality of the examination as at best a lower priority consideration.

    So Congress is unlikely to step in, because the US Patent and Trademark Office has learned over the years to give Congress essentially what it wants, and that is essentially what they are already doing.

  7. Sarah January 17, 2021 6:59 pm

    Brian, do you think a requirement for practitioners to use standardized language in patent filings would be useful?

    I often find that patents replace standard terms of art or scientific terminology with gibberish that makes interpreting/applying the patent into a very timely and painful process… I have to imagine it’s the same for examiners?

  8. Pro Say January 17, 2021 8:58 pm

    Doesn’t the Death Squad PTAB, the unConstitutional SCOTUS, the off-the-eligibility-rails CAFC, and the do-nothing-to-restore-eligibility-to-all-areas-of-innovation-despite-promising-to-do-so Congress render “innovation economy” an oxymoron?

    Doesn’t it?

    (p.s. Thanks for the excellent article Brian)

  9. George January 17, 2021 9:01 pm

    If there is not 100% ‘quality’ – all the time – then inventors are simply being cheated by the PTO (not their attorneys)!

    If there is not at least 99% legal certainty and 99% legal reliability in decisions made by the PTO, then inventors are being cheated by the PTO (not their attorneys)!

    If there is ANY ‘luck’ or ‘chance’ involved in getting the ‘broadest allowable and possible’ patent protection from the PTO, then the system just becomes an ‘IP Lottery’ – not a fair and equitable legal system or process! And, every attorney (even real estate lawyers) know, or should, that ‘lotteries’ are illegal in all 50 states (without specifically being approved by the legislatures in each state – and without their getting a ‘rake’).

    Since the application for patent protection is ‘supposed to’ constitute a ‘contest of skill’ among inventive entities, their attorneys, their competitors (including foreign interests) and the PTO, the examination process CANNOT become a lottery, at any stage of the process (i.e. ‘contest’)! And, certainly, it cannot be a ‘rigged’ lottery!!!

    Check what legally constitutes a lottery in the US (and each state) and how the USPTO now ‘seems to be’ operating and decide for yourselves what our patent system has now become (compared to 100-200 years ago)! There was no ‘guessing’ 100 years ago (though there may have been some corruption even then – at least regarding that famous telephone patent).

  10. George January 17, 2021 9:14 pm

    @ Primary Examiner

    “The Primary Examiner’s work does get checked.”

    How about the supervisor? Who checks up on the group supervisor? How are they evaluated and judged. Do they EVER get fired or even disciplined (say demoted)? Do Primaries EVER get fired? That’s all but impossible, isn’t it? The union makes sure of that, doesn’t it! A PTO employee would actually have to commit a crime to get fired, wouldn’t they?

    We had to PROVE to an administrative judge, that an examiner ‘deliberately lied’ to get the PTO to discipline that examiner and get assigned a new one (which cost us over a year of examination) and even then we were never told if the examiner had been fired! Probably not!

  11. George January 17, 2021 9:32 pm

    @Anon

    I really would suggest NOT using the ‘vacuum’ analogy, if I were you!!!

    “Your desire for “perfect application” will certainly FAIL when one – as is a must – operate in the real world.”

    Not if and when computers become able to drive cars without having accidents, or when computers can ‘fold proteins’ that humans can’t even do, or when computers can read X-rays much faster and more accurately than even trained radiologists can do (and do that 24/7 FOR CHEAP), or when they can beat humans at ANY game that humans invent, or when they help to rapidly develop SAFE vaccines for new infections, or do surgery much more quickly, safely, accurately and far cheaper than humans can, or do ‘legal discovery’ much more thoroughly, faster and much cheaper than any lawyers can do, or . . . similarly do patent searches much more thoroughly and accurately and cheaply than patent attorneys or examiners could ever do while searching ALL OF human knowledge, gathered over centuries, including ALL academic and popular publications not just patents and do all that in minutes or hours 24/7 (including weekends and holidays), NEVER make a mistake about that they find and needing to charge NOTHING to do it (i.e. NO search fees)!!!

    Shall I go on – ‘genius’?!

  12. George January 17, 2021 9:42 pm

    @ David Lewis

    I do know all of that as well (of course). That needs to change now and even Director Iancu seemed to realize that (I give him credit for that). China will overtake us and we will SOON end up with NO independent inventors in America, if Congress doesn’t start to take Iancu’s concerns seriously and the PTO doesn’t start issuing ‘real’ IP protections to inventors in America! I will make a point of telling President Biden and members of Congress this as well. If they don’t listen, then it will be time to go to court as well! It sure got changes made to the VA!

    In fact, there should probably be public hearings about this, as soon as possible. I would be happy to testify as to what I have found and experienced! Almost none of it is good!!!

    Again very similar to the ‘negligence’ at the VA a few years ago! Of course if Congress isn’t willing to provide sufficient funding to the PTO (or any as is now the case), then things will only continue to get worse. I have a solution for all these problems though! It’s called ‘modern’ computers and the latest in AI (plus PTO-specific AI research). We’d be happy to provide our services for that!!!

  13. George January 17, 2021 9:47 pm

    @ Pro Se

    I would certainly disagree with and object to your characterization of we now having an “unConstitutional SCOTUS”. Politically influenced maybe, but unconstitutional no!!! What we need to do is restore respect and trust in ALL our government agencies and institutions, and it’s not that hard to do that, if people care to do it!

  14. Primary examiner January 18, 2021 6:07 am

    @George
    “If there is not 100% ‘quality’ – all the time – then inventors are simply being cheated by the PTO (not their attorneys)!”
    I believe that every patent/office action that comes out of the PTO should be of the highest quality (given the amount of time that the Examiner is given/allowed to examine that particular application. Examiners are not given unlimited time per application). However, quality being a subjective measure, and given the fact that the Examiner is given a finite amount of time per application, I am not sure what you mean by “100% quality”. The best way to ensure each office action is of the highest quality is to ensure the examiners are properly trained ( i personally believe the 4-month training academy was quite useful, and I had a great trainer), the SPEs are there to help the examiners (this is where i think the PTO is lagging, as quite a few SPEs have minimal people and social skills, and do not care much about motivating the examiners), and the examiners’ work is constantly being checked (which is happening as we speak, through regular work reviews).

    “How about the supervisor? Who checks up on the group supervisor? How are they evaluated and judged. Do they EVER get fired or even disciplined (say demoted)?”
    I have never been a SPE myself, cannot speak to that. I am assuming SPEs are rated based on their team’s performance. I do not know the criteria for a SPE to get fired or demoted, but I am sure that there is criteria that allows for this to happen.

    “Do Primaries EVER get fired? That’s all but impossible, isn’t it? The union makes sure of that, doesn’t it! A PTO employee would actually have to commit a crime to get fired, wouldn’t they?”
    An Examiner (including Primary Examiners) can get fired. It is not “all but impossible”. An Examiner’s performance appraisal plan determines whether or not an Examiner gets promoted, and also determines whether the Examiner would indeed get fired. Again, this includes Primary Examiners.
    If an Examiner is a poor performer (performance includes the Examiner’s productivity, the quality of the office actions, among other criteria), and shows no signs of improvement over a defined period of time (during which his/her work is checked/scrutinized more than usual), then the Examiner would eventually be fired.

  15. Anon January 18, 2021 8:13 am

    George,

    Do you really think that any human society would turn over its Justice system to computers?

    Stop and think for a second. Get out of your own way, “genius.”

  16. Fredrick Omukubi Otswong'o January 18, 2021 11:10 am

    Good stuff

  17. KenF January 18, 2021 12:03 pm

    I’ve been in practice since 1992 (’91 if you include my summer between 2L and 3L), and yet I still found this article to be very useful. Thank you

  18. Perkins January 18, 2021 1:31 pm

    Brian

    Thank you for an excellent article. I have known many really good examiners over the years and I often use several of your suggestions for interfacing with them. I am always open to a phone call from an examiner, either asking me to explain some point of the invention or underlying technology which they don’t have time to research, or to listen to the examiner’s comments and suggestions. These phone calls almost always result in saving time for both of us, not to mention agreeable amendments and claim allowances. And, I am happy with compact rejections, if I don’t understand I’ll call and ask.

    Unfortunately, I have experienced some not so good examiners. My pet peeve is junior examiners who are not fluent enough in technical English and/or the field of technology to find good prior art and write an accurate and understandable office action for a cutting edge technology invention. I’m not talking about the occasional bad sentence structure, typo, spelling or punctuation error. I’m happy to deal with those. I’m pointing to a junior examiner’s inability to address all of the claim elements to make an arguable prima facie rejection because they can’t understand the field of art. Perhaps it is the result of the examiner not realizing the application (or maybe the examiner) was not assigned to the correct art unit. This burns up an office action, wastes substantial amounts of time and money for the inventor(s) who usually don’t have a lot of either, leaves a bad examination record, eats into the life of the ultimately issued patent and generally puts the examiner in a bad light with the SPE. In the past year I have had two applications transferred to different examiners with the new examiners withdrawing the previous office action because it was so bad. I personally would appreciate all junior examiners being given applications that are appropriate for their level of technical skill and experience. Don’t give them a large, cutting edge, highly technical and complex application that overwhelms them.

  19. George January 18, 2021 2:23 pm

    @ Primary Examiner

    Sorry, but nothing you have said is in any way reassuring or can even be checked out! There is NO data about disciplinary actions taken at the PTO because probably there’s almost none of that going on there. That was the same problem at the VA! The PTO probably can’t afford to lose even one Examiner, much less maybe 100 of them a year.

    And, an even bigger problem now that is unique to the PTO, and may explain why no one there seems to really care about what goes on there is that the USPTO is the ‘only’ government agency that isn’t taxpayer funded (anymore)! It is run like a private non-profit. That’s just CRAZY, because it means that Congress doesn’t really care anymore what they do or how they do it, as long as they don’t ask for any money from them! Why should Congress care if none of the costs come out of taxes or the budget??? Also, their constituents never ask or complain about the PTO because how many of their constituents are ‘inventors’??? In addition, ‘corporate inventors’ never have anything to complain about! They get paid equally well, whether they get patents or not and whether their inventions are worth anything or not! This is especially true for academic inventors, who could care less whether their inventions are really useful or not.

    It is actually incredible that our government would allow one of the most important and critical agencies in our nation, to now be self-funded, so they can never be held accountable to the American people. This is an agency that can either help grow or destroy our economy (if not properly run) but which it seems no one really cares about! Not to mention an agency that could allow even the most top-secret or valuable technologies to end up in the wrong hands, if things aren’t done properly.

    Who at the PTO is responsible for overall security there? What is their name? Where is that department at the PTO? Do they have a phone number? Is anyone in charge of that over there? Who do you report violations of law or policy to at the PTO? Who do you file a complaint with? Not the Ombudsman office, because they have no power to do anything, either! In fact, I have never found out what these over-paid employees do there at all (except pretend to do things)! Who has the power to ‘independently’ investigate an examiner or SPE (without going to court)? If an examiner has been found to have seriously erred or even intentionally ‘sabotaged’ a perfectly good patent application, what happens to that examiner? Can they be sent to jail for doing that? Have they EVER been sent to jail for ANYTHING they might do at the PTO? If so, how come I can’t find any reports or evidence of that? Where can that information be found (if there’s nothing to hide)? And. what if an inventor commits suicide and ‘directly blames’ the PTO for doing it? Is anyone held accountable? Does anyone there even care? Does the Director even care? Would there be any ‘accountability’ if a group improperly handled an inventor’s application and lead to an inventor’s death or financial ruin? Would anyone care? Would you care? I sure would (I’d probably feel guilty the rest of my life)!!! I’d immediately quit the PTO if I ever learned that happened in my group. Does the PTO at least have a wall, that lists all the American inventors that have died (by suicide) in their pursuit of IP rights or attempted defense of those rights? You know, like the CIA has? You know, out of respect for inventors who may have given their lives for their country and their families, to no avail.

    Also, how come the public can’t learn if the USPTO has ever been hacked, or had confidential information stolen or sold to a foreign power by an PTO employee (even a mail room employee)? Do all employees there get through background checks and top-secret clearances? How about regular secrecy clearances? Do employees who get quick citizenship through marriage get extra background checks? If not, why not? As an Examiner, did you get a secrecy clearance? If not, did you ever ask why not?

    Clearly there are many more questions that should be asked by Congress, or at least someone in the press! We should maybe ask those questions before the PTO gets HACKED . . . again and again???

    Anyone care???

  20. Primary Examiner January 18, 2021 4:16 pm

    @George
    “As an Examiner, did you get a secrecy clearance? If not, did you ever ask why not?”
    Every Examiner goes through a federal background check.

    “Sorry, but nothing you have said is in any way reassuring or can even be checked out”
    I was just trying to objectively address some of your questions, but I think I will stop here. Most of your concerns/questions are above my ability to try and understand them or answer them, and even if I would try to address them from a non-adversarial perspective, not sure how much value that would provide you with.

    @ Perkins
    “Unfortunately, I have experienced some not so good examiners. My pet peeve is junior examiners who are not fluent enough in technical English and/or the field of technology to find good prior art and write an accurate and understandable office action for a cutting edge technology invention.”
    I feel really bad when this is happening. I’ve witnessed myself that some Examiners (Primary Examiners even) have a poor level of English, and it made me wonder how they would be able to comprehend an Application, let alone respond to it in proper English. The hiring process needs to be addressed – if one does not possess a working/functional level of the English language, it is not fair to have that person represent the PTO as a Patent Examiner. The Office needs to address this.

  21. George January 18, 2021 4:17 pm

    @ Perkins

    “Don’t give them a large, cutting edge, highly technical and complex application that overwhelms them.”

    Happens all the time, especially with pro se applications, or applications from small entities. They are almost always given to ‘rookies’ – for practice – regardless of their potential significance or value! They are just assumed to probably have none!

    But, there is no excuse for this! The PTO should ‘triage’ every application to determine if it could involve an important or ‘significant’ new technology! They already do that to determine if they have potential military use. They should have already started doing this decades ago! The US has probably lost billions of dollars worth of great technologies just because they gave many of them to rookies who didn’t know what they were doing. How can we keep doing things this way? It’s both economically stupid and dangerous too.

    The PTO should have no right to basically ‘give away’ American inventors’ inventions (through early publication) and, thereby, perhaps ruin their lives just because they have the power to do so, or because they don’t care what happens, as long as they make their ‘point quotas’ and get their paychecks. Except that they SHOULD CARE! They should care about every single invention that lands on their desk (even if those ‘ideas’ are later deemed to be unpatentable). Indeed, the PTO’s overly used and fairly stupid ‘obviousness tests’ (in particular those based on multiple combinations of prior art), should probably be replaced with ‘significance tests’, that would include ‘secondary considerations’ being treated on an equal footing with other considerations. In fact such secondary considerations should sometimes even trump ‘weak’ obviousness arguments (especially if those arguments are contrived or based on ‘tortured manipulation’ of multiple combinations).

    In contrast to obviousness, ‘significance’, can only be decided by experts in each field, not simply an examiner who is likely not an expert in the field and is also not an economist.

    Invention ‘significance’ should be the ultimate determiner of patent eligibility, not much else. It is pretty clear that is what the Founders intended when they spoke of issuing patents to ‘promote the progress of science and useful arts’. Inventions which don’t really ‘advance’ anything or aren’t ‘really useful’ to anyone, except maybe their originators, are likely NOT the kinds of inventions the Founders were referring to or concerned about.They cared about the ‘significant stuff’ that Americans might come up with (ANY Americans, not just corporations)! They wanted the ‘significant stuff’ given protection, especially against theft by foreign interests. How to determine ‘significance’? The way the Nobel committee does every year (but maybe with a far lower bar needing to be cleared)!

  22. George January 18, 2021 4:43 pm

    @ Primary Examiner

    All of this needs a Congressional investigation and hearing. That’s how you get answers to all these questions and that’s how you find out what’s really going on there (including addressing several of the security questions I have raised). Guess I’ll have to suggest it!

    Anything else (including these discussions) would be useless, and result in no changes being made at all. Director Iancu tried to do what he could, but he doesn’t have the power necessary to do more and he’s probably going to be replaced anyway (for making too many waves). Then it will be back to square one!

    The USPTO doesn’t serve the best interests of American inventors, anymore. China is doing a much better job of that now (at least for its own citizens). The quality of their work isn’t any better and maybe even much worse, but they just care about issuing patents now and beating our counts. China even ‘subsidizes’ it’s inventors and will probably soon make patents FREE for its inventors! We should have done that decades ago! We wouldn’t have to worry about the Chinese now, if we had done that.

    IMO Congress is just stupid when it comes to science, technology, inventions, patents and what motivates scientific progress (basically the same thing that motivates everything else, $$$). Giving scientists and inventors lots of grief and even ‘bankrupting them’, isn’t exactly how you do it! At least China understands that! They ‘incentivize’ invention rather than ‘punishing it’ (and we can’t force them to)! I like China’s system better! Maybe we should go there!

    How many young inventors do we have in in America now? How many will we have in a decade? Any at all? . . . Yet another question for Congress and the USPTO! Clearly a very important one!

  23. George January 18, 2021 5:06 pm

    We can’t afford for the PTO to make ANY serious mistakes – ever. If an examiner or SPE allows more than a handful of them to happen, they have to go and be replaced!

    And, if that can’t fix the problem, then computers and AI will just have to take over.

    We’re talking about nothing less than the future of the US economy here – not just some purely philosophical or legal debates presumed to have little if any real-world consequences. We’re talking about MONEY here and who it gets it and who doesn’t (and if it’s going to the right people)! We’re talking about ‘economic equity’ here, and that makes a difference in any economy. If the ‘money’ that results from innovation, doesn’t end up in the pockets of those actually DOING the innovation, that can’t be a good thing. Right now, it’s clearly not going there!

    If we don’t hurry up and get back to having a ‘first-rate’ patent system (like we did 100+ years ago), then we are in real trouble. Real trouble!

    P.S. We don’t have decades to figure it out, either! More like 1 or 2 at most! China sure isn’t going to wait for us!

  24. Anon January 19, 2021 6:45 am

    George,

    You are aware that the “rules of the game” as to ‘money equity’ are NOT agreed upon, right?

    You keep on making this call for “computers and AI” without recognizing the limitations of the system that you would place such into.

    Your myopia is what leads to dystopia.

  25. AAA JJ January 19, 2021 8:49 am

    The prevailing mindset at the PTO is, “Just reject/deny/say no and see if/what applicant responds with.” That is what examiners are really taught. Nothing will improve until that mindset is eradicated.

  26. Primary Examiner January 19, 2021 10:13 am

    @AAA JJ
    “The prevailing mindset at the PTO is, “Just reject/deny/say no and see if/what applicant responds with.” That is what examiners are really taught. Nothing will improve until that mindset is eradicated.”
    What I have been taught or trained to do (through the Patent Training Academy and throughout my years as an Examiner) has been to: find the best applicable prior art, and if found, then apply it to the present Application. Same goes with the other rejections (101, 112) – only include the rejections if they are in fact deemed to be present, not to apply them as default rejections. Then work with the Applicant to advance compact prosecution.

  27. Mike January 19, 2021 10:33 am

    Good article.
    As a former examiner I would add that the MPEP, at least at that time, was edited by an examiner who went to law school and had no experience practicing law or drafting patents. Examiners take the MPEP at face value and have not looked at the cases it cites.

    Also, I always found it odd that the patent office would train and encourage examiners to use Google. We all know that Google tracks searches. As the owner, applicant, and likely infringer of a good number of patents, isn’t advantageous for Google to know what the examiners are searching? Say someone at Google notices that the PTO is searching innovative aspects of search algorithms…

  28. George January 19, 2021 11:22 am

    @ Primary Examiner

    “What I have been taught or trained to do (through the Patent Training Academy and throughout my years as an Examiner) has been to: find the best applicable prior art, and if found, then apply it to the present Application. Same goes with the other ejections (101, 112) – only include the rejections if they are in fact deemed to be present, not to apply them as default rejections. Then work with the Applicant to
    advance compact prosecution.”

    What if multiple rounds of examination that completely exhaust what can be found with multiple ‘repeated searches’ in order to devise ‘any possible combination’ of the very same prior art with which to raise an ‘endless’ series of new 103 objections that ‘continue to be traversed’ FOR YEARS, but the Examiner & their SPE just refuse to allow ANY claims to issue – no matter what? What’s going on when that happens? What’s ‘really’ going on there?

    What if this goes on for say ‘over a decade’ and over that period of time Office Actions vary from 4 pages to 30 pages and back again, and include suggestions that all claims will be allowed, then those suggestions are again withdrawn and instead replaced with more ‘contrived and tortured’ objections that NEVER END?! What does that mean? What does it mean when ALL applications of the same inventor are treated in this same way (i.e blocked)? Does that maybe point to something else going on at the PTO? Something that’s not openly discussed there? Some ‘secret’ agendas maybe?

    How can that be explained, if all objections are overcome in each round of examination, but the Examiner & their SPE just go on to continue to assert ‘new grounds of objection’, that aren’t even new? Who does the applicant appeal to then (without having to spend 10’s of thousands of dollars and years in court)? How does that advance the interests of the US? How does that help the economy?

    And what if then another (larger) company is then issued a patent on a very similar technology – in just 18 months – where the very same prior art apparently poses no problems to it and no similar efforts are made by the same group and same SPE to find similar combinations of prior art in order to reject the ‘later filed’ application, even though the later filed application clearly reads on the earlier filed (but still unpublished) one? What’s going on there? What happens when the earlier filed but ‘much broader’ patent finally issues (because it will – eventually)? How many problems will that cause for other prior issued patents (that WEREN’T ‘intentionally blocked’)? How many (pre-AIA) Interference proceedings might that necessitate and who will pay for them? The Examiner & SPE that caused them?

    Does any of this point to a ‘fair and honest’ system, or does it maybe point to a, now (at least occasionally), corrupt system that needs to be investigated by Congress and maybe even the FBI? Does it maybe point to efforts to cover-up examination errors by ‘forcing abandonment’ via exhaustion and depletion of funds?

    It’s definitely not the way things should work, is it? It’s NOT how the statutes are supposed to work, is it?

    I’ll be happy to inform Congress how this finally all turns out . . . in a few more YEARS! Any surprise then that I am now in strong favor of replacing inefficient, over-worked, and error-prone examiners (and even judges), with unbiased, unemotional, totally honest, transparent, ‘incorruptible’, FAST and CHEAP computers? I believe the time has come Congress!

  29. Sarah January 19, 2021 12:33 pm

    George,

    Do you think using more standardized language would help?

    It seems that a lot of patents I read seem to use made-up terms when standard engineering terminology would be clear.

    If a patent was more limited to the use of imaginary terms, then it would be much easier for computers to parse.

    What do you think? Or if not, how would a computer resolve this problem, when many examiners are unable to do so?

  30. Primary Examiner January 19, 2021 12:52 pm

    @George
    “What does it mean when ALL applications of the same inventor are treated in this same way (i.e blocked)? Does that maybe point to something else going on at the PTO? Something that’s not openly discussed there? Some ‘secret’ agendas maybe?”
    “How many problems will that cause for other prior issued patents (that WEREN’T ‘intentionally blocked’)? ”
    I have never been told (formally through training or informally), or heard from other Examiners, of any “secret agendas”, or “intentionally blocking” Applications from a certain inventor or inventors ( or to treat inventors differently based on their size, or any other criteria). I wonder where you get your information from, or if it’s simply your opinion. I guess it’s your opinion, and I cannot help you with this one.

  31. Brian Downing January 19, 2021 1:35 pm

    @Primary Examiner

    I’m the author. Thank you for your comments. Let me respond to your comments to further explain my statements about my experience with the PTO. I hope my article did not come across as being a statement bashing all primary examiners. The PTO has some amazing examiners and the vast majority do a great job. My experience has been there are a few primaries who let the standards drop after they get signature authority. On the flip side, I saw some terrible applications come from patent practitioners. Some foreign filers use the PTO examiners as proof readers and I would vote to that if over a certain number of mistakes are made in the application then compact prosecution is off, and the examiner sends a list of mistakes to fix without having to examine and still gets full credit for the action.

    Regarding my “no reward for going above the minimum standard” statement, you are correct there is a quality factor in each examiners performance appraisal plan (PAP). As the PAP score is private I feel there was no tangible reward for a high score (assuming the minimum is meet). If I wanted bonuses, promotions, other work assignments (e.g., details in other places of the USPTO), then production needed to be high and I just needed a satisfactory score on my PAP. To me this meant I need to meet the minimum quality requirements and get lots of work out the door. Also, I found quality to be very subjective, based on the SPE’s unique expectations, and not judged against a golden standard for the most part. The 112s are easy to judge quality but with the 101, 102, and 103 quality is harder to quantify. If your position is that a higher PAP score is a reward, then I concede you are correct in saying there is a reward for quality. For me, since the things that were important to me only required the minimum in quality and lots of production, I feel there is no reward. Thank you for pointing this out. I should have been more clear on this.

    Regarding my statement about primary examiner being basically unchecked, let me explain what my experiences with the USPTO is. In my opinion, 102 and 103 are key statues to meet for patentability, 101 is a close second, and the other statues and rules are more of a formality. As a patent practitioner, I want the 102 and 103 rejections to be on point. I have not seen nor heard a QA person do a detailed analysis of 102 and 103 rejections. From my experience, it seems QA looks at the quick and easy things like 112, 101, and formalities. I’m basing my experience on QA and TQAS people I have spoken with and received training from, other examiners I have spoken with, and work products I’ve seen coming out of the PTO. It doesn’t seem most QA people have the time or the technical expertise to deep dive into a 102 or 103 rejection (TQAS has technical expertise to understand but not always the time to spend). It seems the QA people only have time to look at the low hanging fruit like 112, 101, and formalities. From my observations, once the examiner becomes a primary, the SPE is more hands off. From my experience, I have found a few number of primaries find good art but take a short cut mapping the claims. As a patent practitioner, without good mapping, I’m not sure if the examiner made a mistake or just took a short cut. The MPEP states the claim mapping should be clear. On a regular basis, I see unclear claim mapping. This wastes our clients money and possibly deprives the inventors of their rights (e.g., inventor runs out of money). I say unchecked because I don’t see the PTO system keeping primaries at the quality standard that got them to the primary examiner status. Some primaries keep that standard, some improve their quality, and others let their quality go down. I say unchecked because some primaries are allowed to drop their quality below the MPEP standard, and the PTO appears to not be able to detect nor correct this problem. As I proposed in my article, I would like to see a standard claim mapping format which make it easier for QA to find claim mapping short cuts. As the system stands now, if a primary makes a mistake, the only official action a practitioner can take is to file an appeal. A great improvement would be for the practitioner to be able to flag an office action for QA to review. I’m sure this system could be abused but if enough practitioners flag the same examiner, this would be a good place for QA to deep dive into. Another thing I would like to see is the ability to remove the primary examiner status. Maybe every two years the examiner has his work checked and if a certain number of mistakes are found, the examiner gets demoted to junior. Even better would be to let practitioners flag the cases and parts that get reviewed. I have a similar opinion of tenured teaches as I do with permanent primary examiners. Industry doesn’t do this and I would like to see it removed from the PTO. I want to see the same amount of accountability on the examiners last day as there is on the first.

    The last paragraph was a hand waving exercise. Let me give you a real world case I worked. The following is solely my opinion. As an examiner, I did the initial examination of application 15/369,354. While searching I found sister case 15/369,543 that seemed to have the same spec and drawings as my case, had broader claims, and was already examined. If I remember correctly, Claim 1 was the same in both cases except mine had an added limitation. I thought I had hit the lottery and would be able to quickly knock that case out by reusing the ‘543 case. I could not follow the first ‘543 non-final rejection. The ‘543 case only mapped out part of the claim limitations and skipped around. A SPE that was training me commented on how bad the mapping was. The primary reference for the ‘543 case was an issued patent that was very long and the detailed description did not appear to have been written by a patent practitioner (e.g., the writer jumped around figures they were talking about). It took me a long time, but I was able to map each element of the common limitations from the ‘543 reference into my Claim 1. In the ‘543 app, the applicants representative took the stance that the reference does not teach their claims (I thought it did and showed that in my rejection; all of the Claim 1 limitation of ‘543 were in my Claim 1). In the ‘543 case, the examiner and applicant’s representative go back and forth about what the reference teaches, and the case is currently on appeal. My old ‘354 case has been allowed after some more prosecution. I’ve had dozens of cases with claim mapping issues. My fellow practitioners I’ve spoken with have had similar problems. After looking at all the evidence, I cannot come come to the conclusion that the PTO is checking primary examiners work which is why I said the primary examiners are basically unchecked. I think problem examiners are in the minority.

    Do you feel the PTO quality is where it should be? If not, what do you think would be ways to fix it?

  32. Primary Examiner January 19, 2021 4:29 pm

    Hi Brian,thanks for writing the article – I did find it informative and interesting. Since I do agree with most of your thoughts and suggestions, and only disagree with a few, I’ll just address your last question: “Do you feel the PTO quality is where it should be? If not, what do you think would be ways to fix it?”

    These are my personal thoughts: as long as production (i.e. quantity) will be the primary (not the sole one, but indeed the primary) driver at the PTO, the PTO quality will never be “where it should be”. It simply cannot. If I am given a week to search a case, I will come up with very good references. If I am given half a day (or even a full day) to search a case, chances are very high that my references will not be as good. But the quality standard can be increased.
    The best ways to increase quality and to maintain (even increase) a quality standard include having ongoing training, regular checks of the Examiner’s workproduct (similarly to the way it is done now; the SPE checks a certain number of office actions each quarter, and the office of patent quality also checks office actions randomly. For Junior examiners, all of their work products also get checked by the primary that signs off on their work.)

    Few random thoughts:
    – the QA/TQAS people that I’ve interacted with have been (most of them) very thorough when analyzing the 102/103 rejections.
    – I do not think I’ve talked to any Examiner that takes shortcuts when mapping claims (particularly dependent), so it’s interesting you brought it up – I do hope it is a rare occurrence; it should not occur at all.
    Your idea of re-certifying Primary Examiners every 2 years – not sure how I feel about that; it sounds like it would be a major undertaking, and I personally think that regular QCing of an Examiner’s work would pretty much achieve the same goal.

    I do know that problem examiners do exist – either that they are poor because they are limited in their technical ability/knowledge, or because they are lazy or take shortcuts. Hopefully they are in the minority. I think quality is increasing in importance to the PTO, and the latest performance appraisal changes do reflect that. It’s good to continue to have this conversation – to know what is currently implemented at the PTO first of all, and to think of ways to make the process even better.

  33. George January 19, 2021 7:47 pm

    @ Primary Examiner

    “I wonder where you get your information from, or if it’s simply your opinion.”

    Sorry, but not an ‘opinion’! The problem is ongoing right now and even the PTO’s own General Counsel decided to refer our concerns to the Commerce Department’s Inspector General so they could look into our complaints. We will be following up with them to provide additional information and documentation, including evidence of a SPE simply ‘brushing aside’ his own examiner’s (latest) 25 page OA (which they probably spent many hours preparing), by offering to allow our ‘long-blocked’ patent to finally issue, IFF we ‘simply agreed’ to amend our (fully supported) ‘broad claims’, in such a way as to render ALL OF THEM ‘immediately worthless’ (to anyone having any knowledge of IP law)!

    When we told the SPE that what he was proposing (oblivious to his own Examiner’s OA analysis) as offering a quick and easy ‘solution’ to HIS longstanding denials, would, in fact, immediately render the resulting patent ‘utterly worthless’ and ‘able to be trivially circumvented’ by anyone who wanted to, and that therefore his suggested ‘minor amendment’ and ‘remedy’ would essentially amount to the ‘intentional sabotaging’ of a potentially very valuable invention that took years of effort to develop, and which endured ‘years of grueling examinations’ and thousands of dollars invested, he simply ‘lost it’ and ‘blew up’ and then hung up the phone (no doubt to the shock and dismay of his present but silent Examiner, who he had just ‘dissed’ in front of others in a very stupid and embarrassing way).

    IMO, not a good approach to ‘problem solving’, especially 10 years after innumerable unsuccessful attempts at ‘derailing’ and rejecting a perfectly good, broad (and potentially very valuable) patent.

    So, how do we know that it was a ‘perfectly good’ application, from the start? Because in the past we had few if any of these problems and received several ‘strong’, high quality patents – without experiencing ANY of the current problems and certainly without having to wait 10+ years to get one.

    Something has obviously changed at the PTO, since the quality and originality of our inventions sure haven’t!

    As far as ‘secret’ programs and agendas go, you must know of the SAWS program! There’s even a class action lawsuit going on right now over this, supposedly now ended, USPTO program. It wasn’t exactly a ‘public’ program, was it? What do you know about it? The lead plaintiff is Gil Hyatt. I don’t know the merits of his claims, but he says he’s been blocked and prevented from getting patents for DECADES, without getting any good explanations. Will be interesting to see what comes out of that suit (if anything). And, if necessary, we may file our own lawsuit to get to the bottom of our specific problems. We will not stand for this kind of conduct by the PTO and its employees.

    After all we – as USPTO ‘customers’, pay good money to get competent and FAIR examinations. This process should never be allowed to devolve into a ‘competition of egos’ or even worse, attempted cover-ups of wrongdoing or incompetence!

    The above complaints and observations are, therefore, not just ‘opinions’. They can easily be subject to ‘fact-finding’ by outside investigators and adjudicated by others, if necessary (but at high cost). So too can PTO statistics, ‘patterns of conduct’ and complaints of applicants. Since it’s no longer taxpayer funded, the PTO now operates as almost a ‘rogue’ agency making up its own rules as it goes, subject to very little real oversight. IMO it should go back to being taxpayer funded, since it is in the country’s best interest that it be run well and, indeed, it is essential that it be run well! That would also allow making available whatever funds would be needed to make working conditions, salaries and the retention of ‘top-notch’ employees much better! High turnovers and short careers are never a good sign at any organization!

  34. George January 19, 2021 8:21 pm

    @ Sarah,

    Thanks for the good question but I’ll have to get back with you on that a little later. Those kinds of technical and legal questions require a little care in answering, since they also involve speculation and can get fairly complex (if details adn examples are considered). Right now tied up with some other things.

    I am already working on a ‘wish list’ and an ‘essentials list’ of what computers would need to master to compete with human examiners, lawyers, judges and juries. Of course computers could never have final say over such matters and any decisions arrived at by computers would still need to be subject to appeal to human experts (but not necessarily lay juries). Patent rights will never become ‘trivial’ or the same as just a game of chess. They might become more like a game of ‘Go’! In any case, they will always be ‘high-stakes’ games, where winning or losing could have HUGE consequences for ‘people’ – not computers! But that’s why computers would be the ‘ideal judges’ too! They don’t care who wins or loses, but humans, companies and governments do!

    I don’t know why, but I just like to see ‘fair’ competitions where everyone is on the same page and everyone competes on a level playing field (including financially and resource wise). Maybe it’s just me!!!

  35. Brian Downing January 20, 2021 4:10 pm

    @Sarah
    Sorry for the delay getting back to you. I’ve been helping an independent inventor.

    The patent system requires flexibility in the language since there will be new inventions that will need new names (all of these were new at one time: computers, phones, airplanes, etc.). Using common names has some pitfalls. For example, during litigation infringers may try to use a definition of the common words to confuse judges and juries (I was told this by an attorney with litigation experience). Some companies have been burned by this and will want new language in all their applications. Another issue is some words have different meanings to different people. In the article, I talk about “cup” vs. “liquid-containing vessel”. To me, when someone says “cup” the first thing that pops in my head is a coffee cup. When I think of a coffee cup, I automatically think of a cup with a handle. In my mind, I automatically associate “cup” with handle even though the cup does not necessarily have a handle. On the other hand, when I hear “a liquid-containing vessel” nothing immediately pops in my head. Standard words can unintentionally bias the reader.

    From the examiners standpoint, the examiner’s primary search method is keyword based (assuming a utility patent application). The examiner has to put words into the search tool. If the application has non-standard words then the examiner has to figure what the standard terms are. In one case, I could not find any prior art for the word the applicant used or what I thought the applicant meant. When I went to a primary examiner with experience in the field, he said that is a “crossbar”. When I searched crossbar, I found prior art. On this app, I wasted time looking in the wrong place since I didn’t know that the applicant was claiming a crossbar. An alternative search strategy is to look at every application in a certain classification class (CPC). Sometimes, there are so many applications that it is not possible to look at all the applications. Also, there are lots of shortcomings in how apps are classified. In general, I didn’t find classification class searching to be efficient or effective. Another search method is to search for the problem solved. I’ve found this to be very effective at finding prior art and it also helps the applicant to further refine their claims.

    So far, I have not had a client that insists on using non-standard words. When I’m drafting an application, I try to use the standard words for the existing technology and I’m very careful of how to describe the innovation. I try to communicate what is new in a way that it cannot be confused with existing technology. For example, if the invention was a circuit within a computer processor, then for at least one embodiment I would describe a computer processor with new functionality. I would also include some more generic embodiments that do not include the word ‘processor’. This lets the examiner know to look for processor initially but does not limit the clients invention to a processor.

    All this talk of standard words reminded me of this tool to find equivalent words: https://www.xlpat.com/corpus/

  36. Brian Downing January 20, 2021 4:29 pm

    @Mike

    Let me give you a little more details about Google and the USPTO. I only used Google Patents and Scholar on applications that were already published. The information was already available to the public so there were no secrets to let out. The USPTO has procedures when the application has not been published. My art unit had a large backlog so almost all my cases had been published for over a year. I only had one case that was not published and I didn’t use Google on it.

    I think there is some type of relationship between Google and the USPTO. When I searched on Google Scholar from a USPTO computer, I would get links off to the side for the full articles from the USPTO library. I’m not sure if Google creates the special search pages for the USPTO or if the USPTO augments the Google search results. I know before the USPTO started releasing bulk patent data, it was letting Google collect and distribute the data.

  37. Brian Downing January 20, 2021 6:14 pm

    @Paul Cole
    Thank you for the kind words and history lesson. I started my career in engineering and then switched to patent law. While studying for the patent bar, it took everything I had to cram in the tested material. Now I’m going back to understand more about the history and the logic behind all our laws and rules.

  38. Pro Say January 20, 2021 7:21 pm

    Primary @ 20:

    “The hiring process needs to be addressed – if one does not possess a working/functional level of the English language, it is not fair to have that person represent the PTO as a Patent Examiner. The Office needs to address this”

    Bingo.

    The Patent Office is a horrible place to “treat all as equals.”

    Because they are not.

    Innovation — and especially American innovation — can ill afford such bad-English examiners.

  39. Gus Fring January 20, 2021 7:25 pm

    1. Examiner Production System
    Applicants could have a clear way to know if they will get an allowance if they, 1. Use simple terms. 2. Use terms known in the art instead of cryptic words. I once had an application with “a first pair”, “a first series” “a first region”, “different pair”, … This looks like patent trolling. Trying to confuse the Examiner. Guess what happened. I rejected that crap, got counts. The Applicant can try again if they have an inventive idea.

  40. Brian Downing January 20, 2021 10:38 pm

    @Primary Examiner

    Regarding our what QA checks discussion, I’m wonder if the differences we see are because of different QA focuses. I know the USPTO rotates what QA is checking for. I started the PTA in January of 2019 which is about the time the 2019 101 PEG was rolled out. I wonder if during my time, the USPTO was focusing on 101 issues and that is why I didn’t see or hear about 102 and 103 audits.

    If we would have had this conversation before I published the article, I would have tweaked some of what I wrote. I’m going to start for everything bad I say about the PTO to also say something good. I was part of pros on app number 14/726,781. The examiner did a great job with the OA. The rejections were clear and the prior art was the closest to the application as a whole (not just the claims). In response to our amendment, the examiner called to say he has 3 concerns and if we address them then he will allow the application. Our client agreed to an amendment to address the examiners concern and we got a notice of allowance. This was a UI art unit that had tons of prior art.

    The more I think about it, for QA at the PTO I would like to see the work products being pulled based at least partially on feedback from the practitioner instead of the random process it is now. There is a lot of challenges to implementing this system. Appeals are expensive and I’d like to get a QA person involved earlier. Looking back pre-PTO experience, a lot of issues that I thought were quality issues at the time were just different claim interpretations. I have seen incomplete claim mapping. I previously said the primary examiner took shortcuts. Other than shortcuts, it could be he was just having a bad day. The firms that care about quality typically have someone review the work to keep bad days from going out the door. The PTO junior examiners have to have someone review but the primaries don’t have that second set of eyes.

    Improving quality would most likely increase the cost. The PTO isn’t expected to be perfect and that is why we have the courts. Any PTO mistake hurts the inventors especially for independent inventors and smaller companies that can’t afford the legal bills. Quality vs. cost is a tough thing to optimize for promoting innovation.

  41. Anon January 21, 2021 9:32 am

    Gus Fring,

    You are most definitely part of the problem.

  42. George January 21, 2021 11:31 am

    Who knows about the SAWS program, why it was created, why it was kept secret and how many applications got caught up in it? The PTO claims very, very few applications were subject to it (less than 1/2000). Is that true? What did examiners consider to be ‘sensitive’ inventions that needed much more scrutiny and delay (for years and even decades)? Super-valuable inventions? Super-broad ones? National security related? Those having a major impact on existing business or industry? This all has to be made public now. Who might have gotten ‘screwed’ by this secret program and who will be held accountable if they did? If an inventor lost money as a result of getting caught up in SAWS, will the PTO compensate them for that?

  43. Sarah January 23, 2021 12:36 am

    Brian,

    Your example hits the nail on the head. You were getting paid to ‘waste’ your time figuring out what that patent application meant. Inventors and researches do not have the luxury of this time.

    Your concern regarding the potential legal pitfalls of using more standardized language is valid. However, if the quid pro quo of the patent system is that the invention is disclosed in exchange for rights, then the obfuscation of the invention should be penalized.

    It seems to me, at least for the time being and the lack of any other mechanism, long winded examination is a fair and natural penalty, since examiners are, as you note, technical rather than legal people.

  44. George January 28, 2021 8:11 pm

    @ Sarah

    New terms should only be coined by applicants if absolutely necessary and there is no existing terms that will do. Otherwise it’s being done out of ignorance, lack of expertise, poor scholarship, narcissism, or a desire to pull one over on the examiner. This is another area where AI could really help out. It could easily help find prior terms for the same structural and functional elements and suggest replacements. I am very suspect of people who invent new terms when describing their inventions (like a ‘gravity motor’ instead of a ‘perpetual motion machine’).

  45. Realist April 14, 2021 3:51 pm

    Hey Brian,

    I’ve been here almost seven years, almost two years as primary. Working here is definitely a roller coaster the first few years, but it took me a long time to realize that, as long as there are such stringent production requirements, the manner in which the Office hires, trains and promotes examiners, and thus the quality of output, will not change or get better for either side. As far as the high employee turnover rate stands, it really does weed out many of those who are not ‘meant’ to examine. The quality, however, does improve as examiners become more experienced (I’d assume most primary examiners are qualified and care to do quality work and put forth the effort). As a matter of fact, in my experience, there are just as many low-quality work producing examiners as there are agents or attorneys. For example, I would like to examine the claimed inventions with the focus on the inventive feature. I do not understand why attorneys are not able to: (1) reasonably present the claimed invention in just a broad enough scope that the Applicants actually have possession of; (2) prevent occurrence of more than a normal amount of 112 issues, including 112(a), 112(b), and even 112(f); (3) prevent occurrence of more than a normal amount of minor informalities within claims, and with specification and figures, as well; (4) continue to argue against anticipation or straightforward obviousness rejections with inapplicable or irrelevant rationale; (5) stop making mediocre amendments just to overcome a reference that a person with at least some common sense would know is an obvious matter; and (6) stop adding (a number of, or otherwise complex) new claims to consider, especially as response to a Non-Final. These are just some of the points I’m mentioning here that completely waste the already insufficient amount of time examiners are allotted for a certain action. Just to summarize, I truly believe production requirement is the number one reason for the lack of proper training of new and junior examiners due to immense workload (i.e., the US receives the most applications for patents from all around the world), and thus, lack of quality. But I also believe that about just as many agents and attorneys are not doing enough on their end or are otherwise just as incompetent on their end as there are examiners. I, for one, am fed up with both sides.

  46. George April 15, 2021 7:53 pm

    @Realist #45

    Thanks for the very valuable (and obviously ‘expert’) insights. Sometimes I don’t find a whole lot of firsthand accounts here as to what really happens at the PTO. Interestingly I have never encountered any 101, 102 or serious 112 objections (that haven’t easily been traversed). The only frustrations I have are with repeated (and always ‘new’) 103 objections – based on an endless series of searches and attempts to raise new 103 objections, which shouldn’t happen in the first place, and I don’t think would happen with most primary examiners. Must mean the inventions must be pretty good and broad, because stupid and useless ones are still allowed all the time (since they won’t ever get used or pose a problem for anyone).