One week ago today I posted an article titled Change in Patent Office Philosophy Can Lead Recovery. In the little more than a full week that this article has been available it has been viewed 640 times, which makes it popular for a patent article but nothing nearly as popular as, for example, Obama Wants Open Source IT Solutions for US, which has been viewed 5,910 times during the same span. Notwithstanding, I have received more private feedback from current and former patent examiners regarding my urging for a change in philosophy than for any other article I have written. It seems that there are many intimately familiar with the US patent system that feel a change is necessary, and it is time that examiners work for the Patent Granting Authority rather than the Patent Denial Authority.
What follows is a portion of the communication I received from a current patent examiner who will remain nameless, hence the title of this post. My objective is not to get anyone in trouble, but to provide an insider’s perspective on what is wrong with the Patent Office from a philosophical and human resources point of view.
My view is that under Dudas the Patent Office became the Patent “Rejection” Office, and instead of trying to protect IP rights (which is our purpose), USPTO management’s solution was to hire lots of people to reject out of the problem. This led to an assembly line of under trained, unknowledgeable examiners who were taught how to reject, but not how to get applications to allowance. This “reject, reject, reject now” policy is encouraged by management’s policy of issuing a written warning on an examiner’s permanent file for allowance error percentage above 10%. While this may seem high, if you only allow 20 cases a year it is no problem for quality to find some kind of error in your cases, especially when they aren’t experts in your art.
Additionally, there is a lack of motivation to get cases allowed, because there is no incentive for the examiner to do the extra work required to arrive at claim language which can be allowed. Getting claim language to this point takes me several phone calls with attorneys and/or inventors due to the fact that disclosures typically contain multiple inventions, but claims must be limited to one and because the attorneys and not the inventors usually draft claim language which is usually broad. Add the time spent on phone calls to the lack of credit/counts given for time spent responding to amendments and the examiner is further discouraged from getting cases to allowance.
Finally, regarding examiner pay and promotions. The fact is that as GS 15 examiner is paid less per case/count than a GS 9 examiner. Therefore all he cares about and has time for is rejections. Taking time to call applicant’s for each of the 6+ cases the GS 15 must do every 2 weeks is impossible. Furthermore, as a GS 9 examiner there is no incentive to get promoted, because you know that you will make less per case/count if you get promoted any higher. Plus a GS 9 working OT makes more than a GS 11, 12 or 13 if he does the same number of counts as the respective higher GS level and does the OT to make up for the extra work. How does that make sense?
Before anyone would dismiss what this anonymous patent examiner wrote, let me tell you that I have heard this very thing over and over again from multiple sources. Just this weekend I heard from someone I deem an exceptionally reliable source that he learned that examiners simply do not attempt to exceed their quota goals, which is one of the big reasons for the growing backlog. In years past, in order to be recognized with awards many examiners would strive to reach 110%, 120% or even 130% of their target goals. Apparently today there are few, if any, examiners that seek to exceed their goals. Morale is reportedly at an all time low, and rightly or wrongly many examiners have decided that it is just easier not to issue patents than it is to issue patents and be second guessed. Thus it seems that the exceptionally low allowance rate (now at 42%) and the growing backlog of applications is a function of examiners being urged to reject applications and examiners having little, if any, incentive to attack their work with enthusiasm.
I don’t have to tell anyone familiar with the patent industry that the state of affairs at the US Patent Office is very sad. The fact that management would push examiners to reject applications is appalling, particularly given that the explicit terminology in the relevant patent statutes presumes that a patent should issue and puts the burden on the examiner to find justifiable rationale before prohibiting the issuance of a patent. The philosophical choice of USPTO management to prefer rejections to allowances is anathema to the statute the USPTO is required to implement, and directly contradicts the Constitutional purpose of the patent system.
Large corporations are reportedly deciding to file fewer patent applications and abandon issued patents, which is the type of ignorant decision-making that typically goes along with difficult economic times. During difficult economic times, however, the seed is planted for the next wave of new companies founded on innovative technology. It is no secret that during recessions many who have decided not to pursue inventions are no longer faced with the same lost-opportunity-cost prohibition. If you have lost your job or looking to expand into new fields, it makes perfect sense during a recession because there are few, if any, opportunity costs that stand in your way. I have seen a tremendous increase in entrepreneurial innovative activity, and those I know have also seen the same trend. But if the Patent Office continues to be an impediment rather than a partner we risk cutting off the next wave of technology that would lead to entire new industries, new jobs and prosperity.
It is time for our leaders to take notice and fix the situation at the US Patent Office with all due haste. Like always, it will be entrepreneurs and small businesses that lead us out of this recession, and by having a dysfunctional Patent Office we are only making it more difficult. With so many Czars and hundreds of billions of dollars being thrown around Washington, DC, can’t we get just a little attention at the agency that is tasked with promoting the progress of science and useful arts? I don’t think that is too much to ask for, is it?
About the Author
|Eugene R. Quinn, Jr.
President & Founder of IPWatchdog, Inc.
US Patent Attorney (Reg. No. 44,294)
B.S. in Electrical Engineering, Rutgers University
J.D., Franklin Pierce Law Center
L.L.M. in Intellectual Property, Franklin Pierce Law Center
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Gene is a US Patent Attorney, Law Professor and the founder of IPWatchdog.com. He teaches patent bar review courses and is a member of the Board of Directors of the United Inventors Association. Gene has been quoted in the Wall Street Journal, the New York Times, the LA Times, CNN Money and various other newspapers and magazines worldwide