dont expect anything but shit rejections from primaries, and long winded nonsence 103 rejections from juniors.

I posted in other threads as “OPQA person”. I am now using this name so that there is no confusion that I am speaking officially in any way for OPQA.

That said, you are correct in that rejections (IPR cases – finals & non-finals) are also reviewed by OPQA. However, the number of allowances is approximately the same as the number of IPR reviews for a given TC. At least they were prior to mid-year. Now since 1000 fewer allowances will be reviewed office-wide this year, the number of IPR reviews will probably be greater than allowances.

Also, the PTO goal is under 10% error rate for IPR cases. For any given examiner, however, if they have greater than about 7-8% (forget the exact # off-hand) they would be rated as unsatisfactory & could be given an oral or written warning on their PAP. Of course, the total number of errors needed to rated as unsatisfactory is fairly high because the # of errors is divided by the total number of actions (non-finals+finals+allowances+appeals+abandonments, etc.) for that time period (quarter or year).

Lastly, you are correct in that in recent years the emphasis has been on the allowance error rate. The main reasons for this are that the PTO has to respond to congress for their allowance error rate (the IPR error rate was not thought of as critical for some reason) and because “bad” allowances create bad PR.

If a “bad” allowance goes out it hits the papers & becomes a big issue because the public sees something that they think should not be getting a patent (patents like the “stick” patent or the “swing” patent or the one for entertaining your cat with a laser pointer are those that are generally considered as “bad” patents – note: I am not criticizing them; just repeating what is commonly stated in the press).

Now, if a “bad” rejection goes out what are the repercussions for the PTO? Really, there are none. A case with a “bad” rejection might, at most, get a phone call to a director or even commissioner or maybe some electronic ink on a blog or 2. But no mainstream press. Largely because the general public doesn’t care if some patent application is rejected or not. And neither does Congress (unless some inventor calls his congressman who may then have a staffer make a call to satisfy them). So, from a PR perspective for the PTO “bad” rejections were a non-issue.

Now, I am NOT at all defending the above practice. I am just explaining why the emphasis in recent years on allowance “quality” and not IPR quality. That practice, ultimately, led to where we are now. Upper management (a JD still at the office, from what I heard) felt that the “bad” allowances were bad for the office & a big issue & decided the PTO needed to have a lower allowance error rate no matter the cost (that’s the quote I heard 2nd-hand, anyhow). This led to 2nd pair of eyes reviews, lower numbers of allowances, etc.

Hopefully, we are getting back on course with the emphasis on better 1st actions, getting the best art in the case ASAP & identifying allowable subject matter at the earliest time. Doing this, and with a little cooperation from the attorneys out there & I think we will be seeing substantial improvements in the near future.

~~Logan~~

Amen – well said.

Thanks for joining the debate.

Rising appeals and examiners re-opening to avoid embarrassment is something I am working on. Not sure where it will lead, but definitely a real problem.

My understanding is that the PTO does look at rejections as a part of quality review, but I don’t think they look at as many rejections as they do allowances. So I do think it is unfair to say that they don’t review rejections, but I do think it is fair to say that they should be doing this far more because that is where the real problems lie, at least now. It is also 100% true to say that there is a perception that the PTO has cared more about allowance mistakes than rejection mistakes over the last 5 years (or so). With perception being more important than reality it has had an extremely bad influence on how some (perhaps many) examiners handle cases. I can’t say that I blame them though. Who among us wants someone looking over our shoulder? I think chasing quality lead to unintended consequences, and I personally believe that Commissioner Focarino understands that. Like you, I wish her well.

-Gene

We prosecutors will look at any shift in the PTO toward allowance as “good” — I mean just getting back to the “good old days” of 10 years ago would be such a relief. But we need to look at what is really going on here. Does the PTO have the power by law, regulation, or Constitution to adjust allowance rates like turning a spigot on and off? What is this nonsense about too many allowances or too few?

Every single applicant has a right to have his/her application examined on its merits and on its merits only, without reference to any mass metrics, and without reference to any PTO policy goal of increasing or decreasing allowances. If the PTO is using allowance rates, or anything else, to “lean” on examiners to “knuckle down” or to “ease up,” then the PTO is way, way outside its boundaries.

Fer instance, Gene has previously posted on a “rule” whereby examiners get a black mark if there are more than 10% errors in more their allowances. We were not told whether the same rule applies to rejections, but my understanding is that “Quality” Control doesn’t even check rejections, only allowances. If Quality Control also checks rejections and also awards black marks if the examiner’s rejection errors exceed 10%, then such a balanced rule would be welcome. But if management only penalizes errors on allowance — presumably to discourage allowances — then the rule is abysmal and likely illegal.

If the PTO is taking ANY steps to adjust overall allowance rates, there are APA issues, 35 USC 101 issues, and due process issues. I think we prosecutors and our associations have been negligent in not pushing back on behalf of our clients and the system.

At any rate, I really agree with Frustrated. I don’t need a wet-behind-the-ears examiner telling me how to write my claims. I need the examiner to comply with the APA and clearly set forth why he/she is rejecting the claims, including setting forth where each and every element, step, and limitation is met by the cited PA. In 90% of the cases, if the Examiner simply complies with their obligations, they would see that the claims are not met by the prior art.

I have appealed more rejections in the last 3 years of my career than in the previous 7. And in every single appeal the examiner has re-opened prosecution, allowed some claims and re-written the remaining rejections rather than let their shoddy work go before the BPAI.

Ms Focarino has her work cut out for her. Let’s wish her well.

Likewise I welcome your voice, as too often the voice of the examiner heard on blogs belongs to the noisy and not-too-bright few.

I am interested in your perception of “…more of an attorney’s job is being shifted to the Examiner”. I belive there is a distinct possibility that the examiner’s role may change drastically with the Tafas V Doll pronouncement that the applicant (and his attorney) can be forced to do more of the traditional examiner’s role. Specifically, as I have posted before, I tend to view the ESD (and possible forthcoming AQS) type of “non-substantive” rule making capability as greatly diminishing what the examiner would have to do. It is far far easier to connect the dots that an applicant must provide (to MPEP level requirements), and perform a rather cursory search than to examine an application without such documents. Do you see such a possibility and what is your opinion if such a change takes place?

I don’t think that examiners will be asked to write claims, just to give the attorney/applicant an idea about what they will allow. All too often there is allowable matter in the claims and in the specification and all some examiners do is reject. Some then force the filing of an RCE in order to obtain an extra production quota score. I think that is what the management is trying to stop. This wastes time and adds unnecessary expense.

I definitely think that the production quota needs to change and examiners need to be given more time. The examiner’s role in the process is vital, and having time to work on the case is essential.

Unfortunately, until Congress steps in and reforms inequitable conduct there is not going to be much help from attorneys because anything we do or say is used against the patent to narrow the claims during licensing and litigation. The Federal Circuit is to blame here for ignoring the USPTO view of Rule 56, but since the USPTO cannot force the Federal Circuit to apply the law Congress needs to step in and mandate a stop to the inequitable conduct craziness. If that happens and these changes stick we would have a truly collaborative examination process that should be streamlined.

Thanks for joining the debate.

-Gene

As a primary examiner I have starting taking this approach (more than I have in the past), and while management is making it seem like it should be no big deal to dig through various embodiments in a single application, this is no easy task.

Not only does the examiner have to try and figure out which embodiment applicant is attempting to claim (because the claims are so broad), the examiner must then try and rewrite Applicant’s claims for them (isn’t this supposed to be the Attorney’s job?). Trust me, this takes a significant amount of time in comparison with writing a rejection and getting a response (and pray the attorney understands the art enough to put in an amendment that reads over the prior art already of record). I will admit this is easier for a primary examiner that has experience in the art, but I can’t see many juniors being able to pull this off with the current production constraints (that is, if the SPE will even allow a junior to do so).

I have to say, I’m disappointed that more of an attorney’s job is being shifted to the Examiner, at least that is how it feels from my perspective, and while I don’t really need the extra time to do my job (even with the new initiative), I see plenty of junior examiners that are struggling and just need more attention and to be placed in the proper mindset to do the job (some Examiner’s don’t understand the simple concept of evidence in their rejections).