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Patent Strategy: Discovering Crucial Patent Examiner Data


Written by Gene Quinn
Patent Attorney & Founder of IPWatchdog, Inc.
Principal Lecturer, PLI Patent Bar Review Course
Posted: January 4, 2012 @ 7:25 am

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The patent backlog has been well documented over the years. We don’t need to rehash the reasons for the backlog, but everyone in the industry knows that it takes far too long for the overwhelming majority of patents applications to mature into issued patents.  Sure, pharmaceutical companies, biotech start-ups and Universities may want to delay issuance of a patent, or even delay USPTO consideration of an application, but how many clients of yours really want and even need a patent as quickly as possible?  If you represent independent inventors, small businesses, entrepreneurs and start-ups the answer is almost universally that patents are needed with all due speed.

Over the past several years the Patent Office has attempted to offer a variety of procedures to speed up patent applications, such as project exchange where you drop one application to advance another out of turn and the Green Technology Pilot where certain green technologies are advanced out of turn.  Most famously, perhaps because it was a part of the America Invents Act, is Track 1, where you pay an additional $4,800 fee to obtain a patent decision within 12 months.  With all of these efforts some wonder why more haven’t taken advantage of the various acceleration options.  There are two reasons: (1) patent attorneys are very conservative and don’t like change (with good reason); and (2) $4,800 is no small amount of money.

But what if you could demonstrate to a client that they would likely, or perhaps almost certainly, spend less money paying the $4,800acceleration fee under Track 1 than they would just waiting in line?  You might even have a situation where, on average, cases will wait 4+ years before first office action and 8+ years to patent issuance while still spending more money along the way.  Under these circumstances paying $4,800for 12 month consideration may be the best investment that can be made.

But how do you get that information without having a crystal ball looking inside the United States Patent and Trademark Office? To address these very issues, Patent Attorneys Chris Holt and Joseph Kelly created the PatentCore™ system, which is an easy-to-use online tool that allows you to obtain actionable and immediate intelligence on any patent examiner and on any Art Unit. Not only should the patent bar be using PatentCore™, but the USPTO should also be using it as a means for engaging in quality control.  In order to demonstrate its functionality, PatentCore™ has agreed to give IPWatchdog readers a free 2 day trial of the system.

For example, one of the pieces of information that can be obtained about an examiner is the average number of office actions per case.  We can talk all we want about the ideal average being 2 office actions per case, and striving for something in the range of 2.4 office actions per case, but we all know there are examiners that issue 5 or more actions on average, sometimes even into the double digits in a single case.  So much for compact prosecution!  Knowing which examiners generally speaking do not engage in compact prosecution would allow for better strategic decisions from the start, not to mention it would also give the USPTO the ability to understand where there are problems within its own ranks.

Many of the best patent prosecutors have always worked to develop intimate knowledge relating to a small set of examiners, typically the patent examiners they work with most frequently.  You get to learn what they like, what they don’t like, which arguments will work, how long you have to wait for consideration on average, how long it takes to get a patent on average, whether appealing is a worthwhile endeavor, and so on.  But there are now well over 6,000 patent examiners so it is virtually impossible for even the most dedicated practitioners and firms to effectively identify trends on an examiner-specific basis.

I can envision all kinds of scenarios where the information you glean from PatentCore™ will be useful to your clients.  I suspect you can also use the data to immediately generate more work.  To demonstrate how the data could easily be quite useful by you and your clients, allow me to refer to Patent Examiner O, who is a real life patent examiner.  The system identifies the patent examiner by name, and you can search for any patent examiner by name or by Art Unit.  I however, have chosen not use the examiner’s name or identify the Art Unit because my objective is not to embarrass, but rather to demonstrate how this information can be strategically used.  How and why the USPTO should and could use PatentCore™ should likewise be apparent from this very real illustration.

Here is just some of the information I uncovered about Examiner O:

  • Percentage of applications that mature into an issued patent ~ 23.9%
  • Percentage of applications with 1 RCE before patent issuance ~ 29.4%
  • Percentage of applications with 2 or more RCEs before patent issuance ~ 35.3%
  • Average time between filing date and patent issuance ~ 8 years, 0 months, 5 days
  • Average time between first office action and patent issuance ~ 4 years, 10 months, 7 days
  • Shortest pendency before patent issuance ~ 4 years, 3 months, 10 days
  • Longest pendency before patent issuance ~ 10 years, 0 months, 9 days
  • Average number of office actions between filing date and patent issuance ~ 5.2
  • Most office actions before patent issuance ~ 10 office actions
  • Least number of office actions before patent issuance ~ 2 office actions
  • Percentage of appealed applications where patent issued after BPAI decision ~ 37.5%

What does this information tell us?  It tells us a great many things.  If you are assigned to Examiner O then you are likely in for an exceptionally long wait and have a low chance of ever obtaining a patent (23.9%).  If you are going to obtain a patent you will need 1 RCE 29.4% of the time and 2 or more RCEs 35.3% of the time, which means that Examiner O requires RCEs in approximately two-thirds of all allowed cases.  Notwithstanding the less than 1 in 4 chance of obtaining a patent, if you have the staying power and can carry through to appeal you have a 37.5% chance of success, which suggests Examiner O makes a number of mistakes.  I wonder how many other mistakes are buried in the abandon file and simply not pursued.

The PatentCore™ data also shows us that the fastest patent issued by Examiner O was issued in 4 years, 3 months and 10 days.  Furthermore, Examiner O always has at least 2 office actions in every case and averages over 5 actions per case, with one case requiring 10 office actions!  If you need a patent quickly you are simply out of luck.  This is not compact prosecution; it is, on the contrary, a marathon.  Obtaining a patent shouldn’t be a marathon where you have to outlast the examiner, but frequently it is.  Armed with this information, however, your client will have strategic choices.

Let’s assume that you charge on average $2,000 per response, which for this technology would likely be a decent average, although many at large firms would likely charge even more.  If your case is “average” that means your client who must deal with Patent Examiner O is going to have a less than 1 in 4 chance at a patent issuance after waiting 8 years and paying you over $10,000 to respond to office actions.  $20,000 for responses alone if you wind up in a situation more similar to a “most office actions” case.  Armed with this information do you suppose at least some of your clients might want to pay you to prepare and file either a continuation or continuation-in-part application along with the $4,800 Track 1 acceleration fee?  I suspect that alternative would be appealing to at least some, perhaps many.

Now let me talk to you about the selfish side of law firm economics, after all we are in business like everyone else and need to make a living.  I don’t begrudge anyone making a buck and try to make a few bucks myself.  Since all patent attorneys and patent agents have to sell is their time, and since there are only so many hours in the day, we need to be efficient.  So let’s cut to the chase — will PatentCore™ help you make money?  I think the answer is unequivocally YES.

Most of us likely charge by the hour, and either accept a retainer up front or have clients that routinely and regularly pay their invoices on time for work performed.  That means that you either have client funds in your trust account or clients that have given you a good feeling about their ability and willingness to pay on time for services provided.  So you don’t have to worry about not getting paid for legitimate services.

Many, if not most, practitioners will use receipt of communications from the Patent Office as an opportunity to reach out to clients.  At the earliest stages, once you obtain word from the Patent Office about which Art Unit has the application and which patent examiner has been assigned, run a PatentCore™ search to uncover information about that particular examiner and the Art Unit.  In the letter you will send to the client with the USPTO communication you can add any strategy recommendations you think the client should consider pursuing, perhaps suggesting it is a good idea to schedule a telephone conference.  One letter alone, which will include critical information for the client to consider, internalize and act upon, will more than cover the monthly subscription price.

If you integrate PatentCore™ into your practice on a routine and regular basis you will almost certainly pick up additional work from clients.  You will also be easily capable of setting client expectations, which is something that even the more aware and experienced among us can sometimes struggle with.  The ability to appropriately setclient expectations in terms of time and likely fees after filing makes the system worthwhile in and of itself.  Clients hate surprises and uncertainty.

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Posted in: Gene Quinn, IP News, IPWatchdog.com Articles, Patents, USPTO

About the Author

is a Patent Attorney and the founder of the popular blog IPWatchdog.com, which has for three of the last four years (i.e., 2010, 2012 and 2103) been recognized as the top intellectual property blog by the American Bar Association. He is also a principal lecturer in the PLI Patent Bar Review Course. As an electrical engineer with a computer engineering focus his specialty is electronic and computer devices, Internet applications, software and business methods.

 

36 comments
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  1. This is just wonderful; I can’t wait to check it out. The only other thing that might improve it is stats for the average of the Art Unit, so that it would be easy to see whether your examiner is ‘easier’ or ‘harder’ than average (maybe this is available at the site, but the article doesn’t mention it). Such information would also highlight to the PTO management any examiners who are outliers and thus providing an undeserved benefit or hardship to certain applicants.

  2. While I think this sounds like an excellent tool (and one I plan to explore!), trying to match with the Track 1 fee is a bit off, no?

    Don’t you have to pay the fee prior to knowing who your examiner will be? Does paying the fee (even on a continuation) guarantee that your application will not be shuffled to the very same examiner (or YIKES one that may have even worse stats?

    Also, while having your (first) answer within twelve months is a nice jump start, the program does not guarantee you a final result within that time frame, does it? If you pay that nice princely sum AND get saddled with Examiner O, what then? By the looks of Examiner O, you are guaranteed at least one trip through RCE land, which with the current docket mechanisms leaves you where, exactly(?)!

  3. This is very useful data, as I always tell clients that the second biggest factor during patent examination (the first biggest factor is of course what prior art the examiner finds) is which examiner the case is assigned to (I do a lot of work in the same art units and know most of the examiners, so right away I know how easy/difficult the prosecution of the case will be).

    But I don’t understand some of the data. For example, for examiner Philip Smith (just a random examiner), the bar chart for final action shows: 5.45% 102 rejection/ 49.09% 103 rejection/ 3.64% 112 rejection. Of course 100% of all final actions must have some rejection. Can someone explain?

  4. PL –

    Excellent question. The graph shows the percentage of final office actions that were determined to include each of the different rejection types. Thus, of the 55 final office actions analyzed for Examiner Smith, 5.45% of them were determined to include a Section 102 rejection, 49.09% were determined to include a Section 103 rejection, and 3.64% were determined to include a Section 112 (second paragraph) rejection.

  5. Hi Chris,

    Thanks for the response but I’m still not understanding. if 5% of the final actions analyzed had a 102 and 49% had a 103 and 4% has a 112 then (assuming each action only had one rejection type) that totals 58% but what are the rejections on the other 42%?

    Aside from my confusion on this point, outstanding system and I signed up for a month (and probably longer). I commonly blame drawn out prosecution on the examiner to my clients (while I’m sure they blame me!) and this is good objective data to back up my claims about who is an unreasonable examiner.

  6. This is great work and a big time saver.

    How do they get their data?

  7. PL –

    Thank you so much for your support. Let me attempt to explain the rejection graph in a different way. Each individual percent category is calculated relative to the total number of final office actions. For example, if there were 10 final office actions that each only included a 102 rejection in combination with a 103 rejection, then the graph would show that 100 percent of the 10 analyzed final office actions had a 102 rejection…and it would show that 100 percent of the 10 final office actions had a 103 rejection.

    Some consideration has been given to adding additional graphs to present the data in a manner as I believe you are suggesting. To show an exact breakdown of the rejection patterns in each office action; however, quite a few more bars must be added to the chart. This is because, as you know, many if not most office actions present combinations of statutory grounds for rejection. Thus, for everything to add up to 100 percent and account for the rejection pattern in each office action, there must be a 102/103 category, a 101/102/103 category, and so on and so forth. The chart gets really messy really fast. But there are other good ways to present this data. Perhaps a pie chart? Hmmm…that is not a bad idea.

  8. Hi Chris,

    I’m sorry to be a pain and maybe I’m just not ready to be back to work yet. But if I understand correctly, each type of rejection is included in the bar chart, thus if an action has both a 102 and a 103 it would count as BOTH rejections in the chart. This would mean that the sum of all of the percentages would be > 100% (because each action must have at least one rejection). So going back to examiner Philip Smith final actions, if 5% have a 102 and 49% have a 103 and 4% have a 112, this totals < 100%, so according to my understanding there are "missing rejections"?

  9. I hate to ruin PatentCore’s business model, but the USPTO’s policy is that continuations and continuations-in-part are generally assigned to the same examiner. Filing a track 1 continuation won’t get you a more agreeable examiner.

  10. The PatentCore system has great potential. However, my profile on PatentCore does not represent me at all, probably because less than one-half of my applications have been analyzed. Will the information be updated periodically?

    One major statistic is “Application with Least Office Actions before Patent Issuance” however, mine reports 2 even though some of my allowed applications had no rejections & no RCE’s last fiscal year (i.e. 0) and many of my allowances were immediately after non-final & no RCE’s (i.e. 1).

    Also, it is not clear how this system handles inherited cases. Will I “inherit” statistics of another examiner when I inherit applications from that examiner? If so, my statistics would be very misleading. Examiners routinely inherit entire dockets of other examiners no longer at the PTO.

  11. PTOExaminer –

    Thank you very much for your feedback. The PatentCore system is most definitely dynamic. The system you log on to today will be deeper and more accurate than the one you logged on to yesterday. And that will be true everyday. The statistics are constantly being updated to include additional applications and updates to applications already included in the system. The database now includes well more than one million applications…and it is growing, growing, growing. And we are dedicated to tweaking the algorithms as necessary to improve and protect the accuracy and integrity of the data. We are and will always be open to feedback from inside and outside of the patent office. Our contact information is on the website.

  12. Mr. Holt, what PTOExaminer’s comments demonstrate is that, currently, your data is flawed, incomplete and inaccurate.

    Accordingly, one might legitimately question whether PatentCore is “useful” (as curiously alleged by Mr. Quinn – kickback?).

    Question: from where are you obtaining your data? (The source of your data certainly affects the accuracy and completeness of your data.)

    PTOExaminer also poses the question of how PatentCore handles “inherited” cases. We all know that turnover at the USPTO is high, and cases are very often transferred from one examiner to the next.

    We also know that patent applications are often transferred from one art unit to the next, in order to find the art unit that is best-suited to examine the subject matter of the application.

    I would be that PatentCore doesn’t even consider the possibility that a patent application might be transferred to another art unit or inherited by another examiner. Such events often occur during the pendency of a patent application. These events would render PatentCore useless and the decisions made, based on the information obtained from PatentCore, reckless and dangerous.

    Have a great day!

  13. Anonymous-

    Clearly you are NOT ruining PatentCore’s business model, which is obvious and apparent. That leads me to wonder exactly what your agenda might be to try and knock them down.

    First, let me be perfectly clear. I know I was in the article but it seems you missed it. I was the one who suggested one particular way that PatentCore data could be used to assist clients. If you choose not to assist your clients in that manner then that is up to you.

    Second, clearly if you file a continuation or a continuation in part as a Track 1 there will be more scrutiny of examiner work than in the ordinary situation. There are not that many Track 1 applications and the USPTO really wants to see Track 1 succeed. They are very proud of Track 1 and no cynical examiner who works for the patent denial authority and who drags their feet without reason will be allowed to engage in such game playing with Track 1.

    My guess is that you are a patent examiner, you work for the patent denial authority and your statistics are far more like Examiner O than a conscientious examiner who wants to play a meaningful role in the innovation life cycle in the U.S.

    -Gene

  14. d-

    My claims that PatentCore are useful are curious to you? You must be a patent examiner.

    Clearly the PatentCore data is useful and practitioners and clients will understand why. They can see what happens on the desk of an examiner and inside an Art Unit. Like any other data it is certainly at least some information that can and should be considered. PatentCore provides the examiner’s docket that made up the statistics so everyone can look through to see if an examiner is having their stats skewed because they inherited cases from another examiner. But let’s be honest, shall we? When an examiner has several hundred applications (or more) inheriting some cases here and some cases there won’t skew averages. Averages certainly won’t be skewed any more than by the games that we all know many patent examiners play. How many times are practitioners called with “deals” to issue a patent that are good only until 2pm on a Friday? Like that isn’t a game played to skew numbers. So whine all you want about inherited cases, but that is a pimple on the butt of an elephant and anyone who has thoughtfully considered the issues knows that.

    By the way… how do inherited cases skew Art Unit data? Oh, right… it couldn’t because it would stay within the same Art Unit.

    I think those who are complaining about the data are examiners who don’t want the patent bar (and patent office) to have factual information that demonstrates that there are some rogue examiners and some rogue Art Units. I hear the stories… “I don’t care what the people on the 10th floor say – I’m not going to issue any patents…”

    -Gene

  15. I could see this being a useful tool for attorneys. Uneven examination is a huge problem IMO. The issue patentleather brought up is critical. That bar chart should add up to more than 100% and it doesn’t come close. According to my profile at least 45+% of the time I sent out a first OA with no art rejection. Unless someone is ghost posting rejections for me there is no way that figure is accurate.

  16. Thank you everyone for the overwhelming interest in the PatentCore information system. We are more than happy to share information about the sources of our data. Our statistics are based in large part upon machine readable datasets provided directly by the USPTO to the general public. We say “in large part” because some of the data comes to us from Google, but Google acquires that data directly from the USPTO (with the USPTO’s blessing, of course).

    The Google data that we use is obtained as the result of a gradual crawl of patent documents, including image file wrappers, from the USPTO’s public PAIR (Patent Application Information Retrieval) site. This crawl operates continually and will be retrieving both already-submitted documents and new documents as the USPTO makes them publicly available. As the USPTO makes the data available, Google acquires it, and then we acquire it, process it, and use it to feed the PatentCore data system.

    Currently, the Google coverage (most of which is accounted for in our statistics) includes about 1,422,031 patent applications, including (according to Google) most of the published applications in the following ranges:

    08000001 – 08033366
    08100000 – 08134568
    08200000 – 08235165
    09800000 – 09894396
    09900000 – 09987194
    10000001 – 10076633
    10100000 – 10181211
    10200000 – 10273817
    10300001 – 10369900
    10400000 – 10461394
    10500000 – 10568730
    10600001 – 10666883
    10700000 – 10767679
    10800001 – 10862312
    10900000 – 10966609
    11000001 – 11073148
    11100000 – 11141140
    11200000 – 11239876
    11300000 – 11339059
    11400000 – 11439539
    11500000 – 11538547
    11600000 – 11638977
    11700000 – 11739382
    11800000 – 11837665
    11900000 – 11934601
    12000001 – 12039464
    12100001 – 12140725
    12200000 – 12219134
    12300000 – 12370513
    12400000 – 12471703
    12500000 – 12570144
    12600000 – 12667374
    29000001 – 29026192
    60000003 – 60001535
    90000001 – 90006696
    95000001 – 95001409

    As I said previously, the PatentCore information system is most definitely dynamic. The system you log on to today will be deeper and more accurate than the one you logged on to yesterday. And that will be true everyday.

    No one needs data to know that different examiners and art units operate differently. When patent professionals and applicants are provided with insight into how things work with whom they are working, then they are relieved of the trial and error that has traditionally been relied upon for us to figure such things out. This means more efficient and better communication between the examiner and the applicant, or the applicant’s representative. This very well could mean better patents obtained sooner…for everyone Our purpose in publishing this data is not to expose bad examiners or sing the praises of good ones. Our purpose is to improve the efficiency and quality of the prosecution process by empowering patent professionals and applicants with a useful frame of reference.

    Again, we are dedicated to tweaking the algorithms as necessary to improve and protect the accuracy and integrity of the data. We are and will always be open to feedback from inside and outside of the patent office. Our contact information is on the website.

  17. Chris and/or Joseph-

    Sounds like a great idea to me, especially for attorneys that are trying to optimize their approaches to prosecution and what they can positively suggest to their clients given the history that you can provide.

    One question that comes to mind for me, is when will the inventor or practitioner be able to find out which examiner has been assigned to examine their particular application? We filed an application at the end of last July, partly to avoid possible nasty surprises that the then pending AIA legislation might pose, and also elected for non-publication because we weren’t certain what might happen going forward with the implementation of the AIA. I seem to be hearing that we might be lucky to get a FOA on the merits or lack thereof within 8 months or so, but it might be very useful to find out who the examiner might be as soon as we can.

    Any suggestions about when and whom would be very greatly appreciated. I tend to think we won’t know who until we finally get the FOA in hand, but I am not an attorney. We will then have 3 months to respond if I recall it correctly, without having to pay an extra late response fee.

    Best regards,
    Stan~

  18. Stan,

    If I am not mistaken, the examiner’s name and art unit are available in public PAIR. As far as I know, this info is available as soon as,the PTO gets around to docketing it ( which obviously may take a while). The art units (and examiners) who examine each class/subclass are also searchable on public PAIR, so you have a list of examiners whom you may be likely to deal with.

  19. Thanks CK-
    My patent agent happens to have a degree in computer science, among other things, including physics. He filed EFS, which makes it very easy to go look once in a while if needed. It is mostly his *normal* field, such that the examiners in question might happen to be old friends, so to speak.

    Stan~

  20. Mr. Quinn said “When an examiner has several hundred applications (or more) inheriting some cases here and some cases there won’t skew averages.”

    Actually, I’ve heard of some examiners inheriting over 50 cases from another examiner that left. That will most definitely skew averages. It probably does not happen often but it definitely did happen before and probably will happen again.

    Mr. Holt said “Our statistics are based in large part upon machine readable datasets provided directly by the USPTO to the general public.”

    Now, why would one want to subscribe to your service since the datasets are already provided to the general public?

  21. Judging from those serial numbers, it looks like about 1/2 of the PAIR file wrappers have been crawled. That would be consistent with PTO examiner’s observation that about 1/2 of his/her’s applications are in the data base.

  22. I signed up for the trial, but never received the reply email.
    Have others succeeded? Thanks!

  23. David-

    I tested the free trial before I wrote about it and it worked for me. Did you check your spam folder?

    -Gene

  24. Peter-

    Are you an examiner?

    If you are can you tell me how many times you have called an attorney with an offer to issue a patent on a Friday morning with the offer only being good until 2pm that afternoon? How many times have other examiners in your Art Unit done that same thing?

    Look… we all get how it works and why we get those calls, but if you want to talk about skewing of averages let’s have a full, fair and frank discussion about how patent examiners play with their docket and skew their numbers routinely in order to meet their quota.

    The thing with averages is that they really all work out in the end. If examiners weren’t getting inherited cases and if they weren’t playing games with their own docket to make a quota we wouldn’t have to discuss skewing. But everyone knows that skewing happens all around. The PatentCore data just lets us take a look behind the curtain to see what is going on.

    -Gene

  25. CK or others-

    Any ideas about how long it might take the PTO to docket my NPA so I can find out who the examiner might be? It has been 5 1/2 months since we filed.

  26. The free trial seems like a two-step process – first the approval foro the mailing list, then the free password.

    If you declined the mailing list, you may (?) have short circuited the free password.

  27. David –

    If you have not received an email with your free trial username/password, please feel free to contact me directly and I will help resolve the issue personally. You can email me at: chris@patentcore.com

    Peter –

    The PTO is the original source of most of the raw data upon which our statistics and analysis are based. We process the raw data in a unique way and provide the results to our subscribers in a unique format. So, the patent office generally does not provide the same data as is in our system…or at least they certainly do not offer it in the same searchable format as we do.

    Everyone –

    Thank you so much for the interest in the PatentCore information system. Many of you will soon see that your free trial username/password has expired. Please give strong consideration to becoming a subscriber. Your support will help us continue to develop and improve the system. We will be announcing new system features in the very near future. You can obtain access for as little as $100 per month. If you have any questions, please feel free to email me personally at: chris@patentcore.com

  28. Peter-

    Are you an examiner?

    If you are can you tell me how many times you have called an attorney with an offer to issue a patent on a Friday morning with the offer only being good until 2pm that afternoon? How many times have other examiners in your Art Unit done that same thing?

    Look… we all get how it works and why we get those calls, but if you want to talk about skewing of averages let’s have a full, fair and frank discussion about how patent examiners play with their docket and skew their numbers routinely in order to meet their quota.

    The thing with averages is that they really all work out in the end. If examiners weren’t getting inherited cases and if they weren’t playing games with their own docket to make a quota we wouldn’t have to discuss skewing. But everyone knows that skewing happens all around. The PatentCore data just lets us take a look behind the curtain to see what is going on.

    -Gene

    —————————————
    Yes, I am an examiner. No, I have never called a practitioner and given them anything less than 24 hours to make a decision, never ever. Actually, there were only a couple of times that I gave them anything less than 3 days to decide because I knew that some inventors were not in the US, which required more communication time. I talk to half of the examiners in my art unit on a regular basis and, to my knowledge, they usually give ample time to practitioners to decide as well. I can’t speak for the rest of the examiners in my art unit though.

    I was just responding to what you said “When an examiner has several hundred applications (or more) inheriting some cases here and some cases there won’t skew averages.” You said inheriting some cases here and there WON’t skew averages. I disagreed and provided you with a real-life example of an examiner that inherited over 50 cases (I believe it was closer to 70 cases). Like I said already, It probably does not happen often but it definitely did happen before and probably will happen again. I was not complaining about the skewing of averages at all.

    P.S. I get annoyed sometimes when practitioners complain about how bad examiners are. Look, you said in this article that practitioners make $2,000 per response on average. How much do examiners make per response? Probably a fourth or a third of that. I mean I try to do the best job I can but do you really expect all examiners who get paid a fourth or a third of what you make to perform at the level that you do? Sorry for the off-topic.

  29. Chris Holt,

    Per the concern about inherited cases, when you provide examiner statistics, do you check to make sure each office action is signed by the examiner in question?

  30. Thanks for the very fast assistance from all!
    I’m logged in and admiring the data first-hand.

  31. Not too shabby, especially considering that this product will only get better as the holes get filled in.

    I tried a few of our portfoliios and noticed some gaps even within the ranges given above.

    The per art unit stats may need some macro handling, as the singular art units do not tell a complete story (that’s not the tool’s issue – that’s an issue with the classificaiton system).

    Would love to see the compliment of this and have a “grading system” for the applicant representatives.

  32. I think Mark is asking the right question.

    Since 2007, I have inherited 2 entire examiner dockets (about 60-70 pending actions from each examiner at the time of inheritance). This is why I asked about “inheriting” statistics. I think its rare to inherit an entire docket, but it happens.

    I don’t think it would be feasible to check that each office action is signed by the examiner in question. While most examiners sign actions as “/FirstName LastName/”, there are quite a few who sign just with initials (i.e. /FN/) or some other way. I have seen quite a few actions with no signatures on them at all. Also, there are SPE and primary signatures on junior examiner actions as well – and examiners seem to sign all over the place (i.e. left, center, right alignment). I suppose it would be possible to extract and OCR the signatures and compare them to features of the examiners name. Sounds like something I would love to code (and patent!) – Mr. Holt are you hiring? j/k The only way I would give up being a primary is if I win the lottery :P

  33. Peter-

    First, regarding you never giving less than 24 hours and typically 3 days… good for you. I mean that sincerely. Obviously, I have not had experience with the overwhelming majority of patent examiners given the shear number of examiners, but from my practice and what I hear from other attorneys what I described (i.e., a call at 11am with an offer good only until 2pm) is quite common. I think it is certainly fair to discuss skewing regarding inherited cases, but not to consider examiner skewing and the games we know that some (perhaps many) examiners play with RCEs, is unfair. If we are going to go beyond averages then all skewing needs to be taken into account and much of that is gaming by examiners. With the new patent dashboard and now with PatentCore data much of the gaming of the system to meet quota will increasingly come to light.

    You say: “you said in this article that practitioners make $2,000 per response on average. How much do examiners make per response? Probably a fourth or a third of that. I mean I try to do the best job I can but do you really expect all examiners who get paid a fourth or a third of what you make to perform at the level that you do?”

    I have been a champion for examiners. I say all the time you guys are over worked and under-paid. I have told Director Kappos that directly (stay tuned for more on that in the coming days/weeks). Having said that, can we expect examiners to perform at the same level? Why not? If you are uncomfortable with what you make as an examiner then consider going to law school and/or just leaving and being a patent agent.

    Notwithstanding, I will point out, however, that you should keep in mind that the typical formula for most firms is as follows:

    Associates get about 30% to 35% of what they bill, with 30-35% going to overhead and 30-35% going to firm profits.

    Partners typically get between 50-60% of what they bill, with 30-35% going to overhead and 10-20% going to firm profits.

    So on the $2,000 action the person doing the work would typically get $600 to $1200 depending upon years of experience and level within the firm. So it is not accurate to say that $2,000 means the attorney gets 3 to 4 times what an examiner gets. Is there a premium? Perhaps if a partner is doing the work, but not at all what you are suggesting.

    People frequently forget that lawyers operate a business and have rent, insurance costs, staff costs, regulatory compliance costs, CLE requirements, phones, electric, etc. etc. I just wish that message would get through so that when an attorney says “your will will cost X” people wouldn’t always incorrectly assume that means that 100 cents on the dollar is going to the attorney.

    -Gene

  34. Hi Chris,

    You didn’t respond to my prior inquiry but maybe I wasn’t clear in my question. But first I want to say that anyone who just stopped at the free two-day trial is missing out, this data is not really available anywere else and for important cases it is critical to see what you may be facing. Each examiner has their own unique difficulty level of working with.

    I want to start using this data to advise clients but before I can do so I still need to understand the data completely. Let me give you a specific example to explain my question: Look at examiner Peter J Smith, for first actions it says 33% 103 and 0% all other rejections. This examiner has 6 analyzed applications (which are listed on the bottom) and the “first OA rejection frequency” chart says it is based on 3 actions. I manually looked at all six initial office actions for the serial numbers listed on the bottom and compiled the below rejections:

    09/825004 102/103
    10/034175 102
    10/134531 101/102/103
    10/161924 102/103
    10/443364 103
    10/846247 103

    According to your response above, you said that mixed 102/103 rejections would count as both 102 and 103 rejections in the chart. So the above data for the six applications (regardless of which possible three applications are used in the analysis which are not disclosed) could not possibly result in the chart for this examiner which shows only 33% (1) initial action with a 103 rejection and no other rejections. Regardless of which three applications are used for the graph there would have to be at least 66% 103 rejections (or 100%) and at least 33% 102 rejections (or 66% or 100%). Other examiners have similar issues.

    Again, I just want to make sure I understand the data completely before I start using it for professional purposes. Thanks for your reply and I hope to remain a subscriber for a long time time to come.

  35. Patent Leather –

    Thank you very much for your comment…and your support!

    The fact of the matter is that the rejection-specific statistics (meaning ONLY the non-final office action table and the final office action table) are generated based on an automated analysis of several million of office action documents. In particular, optical character recognition is utilized to extract text from the documents and then classifiers are applied in an effort to determine which documents include which rejection types. These processes are not as precise as the algorithms utilized to generate all of the other statistics in the PatentCore system – in particular the statistics outside of the two tables. Due to the higher margin of error, a relatively high number of analyzed office actions is required to surface valid trends in the different statutory sections utilized by examiners and art units to support their rejections.

    We need to more clearly communicate everything I just said in the previous paragraph to ALL users…within the system itself. But in the mean time, we do NOT want the fuzzy nature of the rejection-based statistics to take anything away from the not particularly fuzzy and much more accurate algorithms and processes utilized to generate all of the other statistics in the PatentCore system – like I said, all of the other statistics outside of the two tables. So, we are going to take down the rejection-specific statistics (i.e., the two tables) for the time being. If a subscriber (or a group of subscribers) reads this message and would like for us to turn the two tables back on just for them (i.e., associate the the tables for inclusion with your username/password), just email us and we can make that happen.

    I hope you are satisfied with this explanation. If you have any other questions or concerns, please do not hesitate to post again…or to email me personally (chris@patentcore.com). I would also be more than willing to talk to you on the phone and answer any questions you have about the accuracy of the data (just shoot me an email).

    We really hope that you and others will support us financially by taking a paid subscription. The funding will help us help you!

  36. I know I am a bit late to the party as far as comments are concerned but I just found this article and wanted to give my 2 cents.

    As a patent examiner, the first thing I did was look myself up, and I got to say, patentcore’s stats are much more informative than the ones the office uses. For example, the office’s actions per disposal stat tends to hover around 3.5 for me, but patentcore gives an average of 1.2 actions per issuance/abandonment. The reason? The office includes *all* documents, including notices of abandonment and allowance, interview summaries and advisory actions. Also, the office counts the each RCE cycle as seperate, so a case that’s allowed right after an RCE looks like a 0, whereas to patentcore it is at least a 2. The patentcore system is much cleaner and more fair. I actually show as better due to my low RCE rate (9.2% of all my apps go to RCE stage) whereas the Office shows my action per disposal rate as even with my officemate that routinely goes to 2nd and 3rd RCEs.

    Also, if anyone is concerned about the missing data noted above can rest easy, it appears the data is now updated.

    Also a note on the continuation and continuation-in-part, it is true that ANY continuation or continuation-in-part will be assigned to the same examiner, provided the claims would be directed to the same art unit and the examiner has not left the office. This is well established office policy designed to prevent examiner shopping. While the author of this article makes a good point that some examiners are unreasonable, the office does not want applicants or their attorneys to be able to simply choose the easiest examiner.