First, the Office has rapidly expanded with a glut of applications in the last decade forcing a ridiculous number of new examiners to be hired. Such a large number necessarily dilutes the talent pool. Further, the newbies aren’t well trained. Prior to reaching their examining group, they spend months in a training academy attempting to learn all facets of the job and being supervised by examiners having no knowledge of their art area. In the past, examiners were placed in their art units after 2 weeks and received hands-on training by experienced examiners or their supervisor who were knowledgeable about their art. Later, they attended classes at regular intervals for further training.

When I started in the Office, supervisors had many years of experience. Currently, you see examiners appointed as supervisors one year after becoming a primary examiner. They barely know how to do the job themselves, let alone train other examiners. They are usually appointed in art areas they are unfamiliar with, hindering their ability to assist the junior examiners in searching and expediting the prosecution.

New examiners are also trained to write short stories on first action, never getting down to the crux of the inventive concept and wasting a great deal of time. The short form of the 1970s worked great, consolidating the issues for either a final rejection or allowance on the next action.

The Office has also failed to keep up with the classification system, breaking down subclasses for easier searching. They have forced examiners to only word search every case. Subclasses have grown so large that it is virtually impossible to comb through an art area.New examiners never learn the art and are never comfortable that they have the best art in the case. The published applications are no longer classified by examiners, causing numerous misclassifications. This causes examiners great trepidation when it comes to issuing a case fearing that Quality Review will bounce it, and they will be rated poorly. The SPEs also fret about QR since it will affect their rating as well. Therefore, examiners continually make new rejections, attornies file RCEs rather than appeal, prolonging patent prosecution. Hence,the low allowance rate in the Office.

I, for one, don’t believe recent cases, such as KSR, have forced the extended prosecution. Even before these cases, I always examined and trained with a common sense approach to obviousness. Some combinations are clearly logical, some simply don’t make sense. My allowance rate has always been around 67%.

Since I work at home, I don’t have as much contact with the younger examiners as in the past, but I do believe most examiners who choose to stay in the Office want to become a Primary Examiner, if not for pay than for no other reason that their decisions become their own. I just think that with the push in the Office for “quality”, it has become difficult for the above reasons, causing many talented hires to leave the Office and the remaining ones to flounder in many cases.

“I do personally take issue with the fact that a promotion or Signatory Authority results in less immediate pay per count, but there are still incentives to get promoted, so please be clear on the facts before throwing out absolutes that’ll get people stirred up.”

I don’t think it was the anonymous examiner’s intention to “get people stirred” up. My interpretation is that he was simply trying to convey that it would be beneficial to those that DO want to get promoted and to those that DO NOT want to be promoted, that regardless of what you choose, you will get paid more money for more work. Ideally in a production based environment (like that found at the patent office) you would want to make more money in proportion to the amount of extra work that you do.

Everyone Else-

Regarding Continuing Claims Rules, Bilsky and KSR, my personal opinion is that they are very bad solutions/decisions that were aimed at a very few bad (i.e. horrible) patent applications where the attorneys and/or inventors were egregious abusers of the patent system. These “bad apples” have effectively spoiled the whole brunch. Now these decisions/solutions are now being used to prevent both the good applications and bad applications from being allowed.

I’ve worked on several applications where I could have easily used KSR’s very loose reasons for motivation to combine, but knew that I would be overturned if the case ever went to appeal. But on the flip side, KSR is a great tool for the applications that combine technologies in analogous arts.

In finality, it would be great if USPTO Upper Management, Middle Management, and Examining Core could have an open forum with Inventors and Attorneys. This forum wouldn’t even have to take place in the same room. It could consist of each party separately voicing there concerns amongst each other, then each party hearing the other party’s concerns, that way we could arrive at diplomatic solutions for everyone’s problems.

I’m asking a lot, but that because I’m an optimist.

Bureaucracies exist to expand themselves. When the USPTO confronts an incoming flow of applications that drops off a cliff, due to Tafas v. Doll, KSR, Bilski and the Greater Depression put together, someone is going to panic and realize that the power and influence of their agency is dropping off a cliff along with the incoming workflow. Maybe then actual reform will be possible. Until then, we’ll just get more punitive rule changes, clueless Congressional bills and out-of-touch USPTO management.

The fact is NOT that a GS-15 is paid less per case than a GS-9. Even those GS-15 examiners with “Expert” or “Senior Examiner” status (both of which increase the amount of work required) get paid more per case than any other examiner *at the same step* except possibly a GS-14 with Partial Signatory Authority. While there is an immediate disencentive to get a promotion since going from say a 9/8 to an 11/5 does result in a ~6% effective pay drop, anyone who wants to be able to sign their own work, plans to make a career out of examining (or even stick around long enough to max out their step at whatever grade they’re at), or cares about their pension (which considers only base salary, not OT) needs to take the promotion.

Furthermore, a GS-9 working OT DOES NOT make more than a GS-11, 12 or 13 *at the same step* if he does the same number of counts. This is the same situation as promotions – initially you can’t make as much money but it also gives you more free time (or lets you be more honest about how much OT you worked, whatever ).

I do personally take issue with the fact that a promotion or Signatory Authority results in less immediate pay per count, but there are still incentives to get promoted, so please be clear on the facts before throwing out absolutes that’ll get people stirred up.

Amen! I agree completely. I also think in any cooperative prosecution the examiners should focus on the specification and then work toward appropriate claim language with applicants. That would ensure adequate disclosure and lead to claims that could be issued.

-Gene

Thanks for the note. I am sure you are right. The thing that scares me, however, is that while the view of 6 is so twisted and extreme it is a view that could well be that of certain senior level officials with the PTO.

How is it possible that the solutions that are so clear on their face are so illusive to those in power, and those who are clueless?

Thanks for reading.

-Gene