Exclusive Interview: Commissioner Focarino — Part 3

By Gene Quinn
February 17, 2012

Commissioner Focarino in her office at the USPTO on January 27, 2012.

In this final installment of my interview with Peggy Focarino, Commissioner for Patents, we discuss the examiner count system, production and Art Units and Patent Examiners that do not issue patents. What can the Office do about rogue Examiners and rogue Art Units? Does the Patent Office even understand this is a problem? Focarino was enormously candid, and it is clear to me that senior management at the USPTO know they have a problem and are working to create fixes.

To read the interview from start to finish please go to part 1 of the interview.

QUINN: Now with regard to the count system, from the attorney’s perspective, I think the new count system addressed the concern about RCEs pretty wellthere for a while it seemed, at least the perception was, and with every perception there is at least some reality how widespread it is, who knows, but there was the perception that it was very difficult to get some examiners to give a good treatment until you got into the RCE.


QUINN: So with the reduced count that seems to have improved. I think a lot of attorneys would have rather seen the count go down even more for the first RCE.

FOCARINO: Yes. And that was something that he had talked about with the union and we could not get there. So we —

QUINN: I figured that. But the one thing that I have heard from people, and I have wondered about myself, what was the thinking behind this shift in RCEs where they used to go to essentially the front of the pile.


QUINN: And now they seem to go to the front of a different pile, and in some cases can take 12-14 months to get back.

FOCARINO: Yes, the initial thinking was that examiners would have more professional discretion to pick up these RCEs when they thought it was appropriate to pick them up. They had been placed on the amended docket so examiners had to do them within two months. That caused a lot of problems for some examiners, especially who had a lot of RCEs it would really restrict their ability to do any other new cases because they had to pick these up in a very short turnaround time. So the thinking was that if we moved them to the special new case docket examiners could use their professional discretion to pick them up when they felt was the right timing based on the other things that they had to complete in their docket, the other cases. And the thinking was also that RCEs are something that should be easier for examiners to work on, hence the, it used to be that examiners got the same amount of credit that they would for a new case. So we reduced that, albeit, not a lot. From two counts to 1.75, but the thinking was that examiners would still pick these up at a faster rate because they are easier to do.

QUINN: I am not sure that is happening.

FOCARINO: Well, it is not happening in all areas. And we do have the ability and we are looking at particular areas where it is not happening and trying to figure out why it is not happening and do we need to put some other measures in place, or things in place to get these moving. So in our QIR data that we have, that also looks at RCEs and then number of RCEs on a docket and what happens if you have a second and subsequent RCE for a particular examiner. So we have some data points that we can look to see if there is outlier behavior in terms of RCEs.

QUINN: And how do you handle outlier behavior? I mean, this may be a good segue into another probably sensitive area, but I would like to ask about. Because as you know, Google is crawling, permissive crawling. And there are all kinds of data that is now available. And there are a number of different software platforms that attorneys, (particularly the ones I see are made by attorneys who are software engineers, electrical engineers), and they have identified the data set and they identify ways to use it. So there are all kinds of data that is coming out and it is not a complete set, but I guess there are about one and a half million files now available and more every month.


QUINN: So rather than looking for the practitioner trying to sample a handful of cases or a dozen cases or even maybe some law professors like Dennis Crouch or Patently O at times has surveyed several hundred cases. Now we have a chunk of data that we can look at. And it is still probably a sampling at best. But some of the stuff makes you scratch your head. I mean, some of the art units that I have seen have got an allowance rate of close to 85% and some have fewer than 5%. And we are still waiting for more data. So I guess the question I have at this point is a few fold. One is what kind of data do you have at your fingertips that you can look for this outlier type behavior? Outlier potential. And then, two, how do you go about handling? Because I know it has got to be a sensitive issue. And it is compounded by the problem that every examiner is dealing with something that on some level somebody thought was brand new. So there is a huge subjective component as well.

FOCARINO: Right, right. And you are right; it is an area that is sensitive. But I think you raise a good point about the more tools that are available to the stakeholder community to be able to look at an individual examiner and see what their allowance rate is, how many actions do they take to come to a final disposition? How much time is there from filing to final disposition? What is their win rate at the Board of Appeals? I mean, the more that stuff comes out, to me it brings in an opportunity for us as managers to look at the data that we currently have on examiners in our quality index data. I mean, in our new quality metrics, so there is a QIR component, right, that is figured in there. But the quality index actually contains about 99 data points on every examiner. And what I would like to do, especially, I think, as I say, I think an opportunity has been created, give each individual examiner what we would consider to be the important data points out of that QIR data that they would want to see. What is their allowance rate, what actions per disposal, and what is the time from filing to final disposition. Things like that. Those are performance measures that I think they need to be aware of and concerned about. But I would also like to show them how they look relative to say their work group, because really, you are going to have variances in different technology. So what you consider to be outlier behavior in one area, you cannot compare it to another area. So you gotta look in the same, and then you can spot what is going on in their art unit that has a very low allowance rate but they have a sister art unit does the same technology and the allowance rate is much different.
QUINN: Yes. That is what has had me scratching my head a little. The other thing is, in the articles I have written recently, I have found that the largest companies in the world dominate those groups. And a lot of the applications, you just sample some of the stuff that is available through the data. I have looked through a lot of these applications. I have read the office actions and responses and I have read the board decisions. And you see these extremely long prosecutions. And six, seven, eight, nine, ten office actions and at some point in time when you are dealing with a Fortune 100 company who’s willing to pursue this for ten years and go up to the board. And what I am hearing, is people are saying, oh, well, this data is showing me that we are not the only ones that are having issues.


QUINN: If you would like to react to this, I would love to get your thoughts. Also what role do you see the patent office playing to try and encourage, getting down to the 2.4 office actions per case that you would like, to get down to the time length that you would like and to get to the allowance rate that historically seems appropriate.

FOCARINO: Yes. I think that we have the data now, right.


FOCARINO: And we have a lot of data. So the key is to put consistent processes in place in each of the technology centers so that we are looking at the data on a management level and we are reacting to the data. There is some affirmative action that is got to occur after you see what you consider to be outlier behavior and how do you approach that. And I think it starts really with the first line manager and their performance metrics and award system. If we can reward them for trending say in a better direction for actions per disposal, trending in a better direction for lowering the number of second plus, non finals, those things that we know prolong prosecution, real low allowance rates in the same technology when another area has a high allowance rate. When we can see those things and get the supervisors to focus on them and incentivize them for putting initiatives in place in their individual areas that are going to bring those areas more towards the desired behavior, I think that is the key. That is the key because those supervisors are the ones that have the ability to change. And some of it, I think, is it takes a long time sometimes to change people’s attitude. And when we were looking at every allowance again, in the second pair of eyes world, basically you had behavior where people did not want to move it to the next step. So to try to prove to people that that is not only not what we want because that goes to the compact prosecution, but in fact we want people to have the authority to make decisions. And there are other mechanisms to correct things. Sometimes it takes some people longer than others to embrace that change. And they will do it when they see that that behavior is rewarded.

QUINN: So you guys are working on all this?

FOCARINO: Oh, absolutely, yes.

QUINN: And it is fair to say that your team is looking for outlying behavior and trying to figure out ways to incentivize changes?

FOCARINO: Yes! Absolutely.

QUINN: Okay. Because one of the things, and I will just throw this out there, and this is probably not a question, and if you care to comment, that would be great. But if you do not want to, that is equally great. One of the things that I hear a lot, and I also see in the blogosphere, and you get these things anonymously, but when you hear the same thing so many times from so many different people and so many different places. It seems that some of the younger examiners feel whether they are being told this or now, who knows? But feel they are being told by some of their supervisors to find a reason to reject.


QUINN: And the interpretation that they come away with is, is find any reason to reject, just reject, reject, reject.


QUINN: And that is not, when I talk to you and I talk to Dave or Terry—

FOCARINO: Yes, that is not what we are espousing. That is definitely right, we are not. And I have heard that, too, from some examiners. I chat with a lot of examiners, and that helps me at least more, to hone in on where we may have people that have not embraced this change in the direction that we know is the right way to go. But we can look at the data, the QIR data and tell if somebody is churning, or have they made a second, like I said, second plus non final, that would tell me that they did not find any reason to reject it the first time and then they got in—and so you have data points that can support this rather than just the perception.

QUINN: Because for me the insidious thing is is driving stuff that could and should be patented into the abandoned files.


QUINN: And philosophically that is just the way I approach this. And seeing what good new innovations do for the economy I would love to see that minimized.


QUINN: And I know we are just about at the end of our allotted time. I have really enjoyed our conversation, but maybe to end on a positive note, maybe we could joke around about, I know on Monday, and this interview will post after this has already close, but Monday is the last day to comment on the new satellite office locations for the PTO. So I wanted to put my vote in with you for a Southern California location, preferably somewhere in Newport Beach or Laguna Beach.

That would be my absolutely ideal location. But I know it is not going to happen. But I do know that there are several Members of Congress from California who are making a very strong case. One for San Diego and one for Northern California. Have you looked at the comments yet? Do you wait until all the comments come in? How long do you think the process is going to take? Do you have any information you could give us at this point? And if you want to say Southern California, I am okay with that.

FOCARINO: Yes. I haven’t seen the comments yet. Typically we will wait until all the comments come in and get a team together and sit down and look at them. And obviously, there are certain criteria that have already been established for us. But I am excited for the Detroit office to start up there in the summer.

QUINN: And is that still on target for July?

FOCARINO: Yes, the end of July and that will help us learn what we will need to do as we determine additional satellite locations. Because it totally changes, I think, the paradigm of how we view ourselves as an agency, frankly. It is a whole new ground. There are critical criteria that we need to look at as we expand our workforce.

QUINN: Is there a timetable?

FOCARINO: I am meeting actually with my team this afternoon on the Detroit office, and I know that they are already looking at future sites and how we may want to change our hiring model or our training model, or the purpose of the office, would we let people transfer in there from here? Would we just hire from that area? So we are looking at a lot of different things. And of course we would have to negotiate this with the union.

QUINN: Right.

FOCARINO: We negotiated the Detroit location and if we just wanted to replicate that in another area it would probably be pretty straightforward. But if we think we would want to try different things, different looks, then we would probably sit down and talk with the union. But I think we would have good opportunity to try some variations on it. But, yes, I am really excited about it.

QUINN: Good. I am very excited. I think that this chunk of time when we all are at our retirement parties and we look back, we are going to think of these few years the same way that the people who were our mentors thought of 1952.


QUINN: This is that moment for us in our generation.

FOCARINO: Right. And I am really excited about it. It is a once in a lifetime opportunity and I am just, I am honored to be serving as the commissioner. I think it is a tremendous honor and it is a tremendous opportunity to lead the patents organization in the biggest change that people will ever see in their lifetime, probably. And try to do it in a balanced way. And always be willing to listen to how it is impacting our user community and change when we should to do the right thing.

QUINN: Well, great. Thank you very much again for taking the time.


The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and founder of IPWatchdog.com. Gene is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman Malek. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

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 and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 6 Comments comments.

  1. Stan E. Delo February 17, 2012 5:47 pm

    Another very well done interview Gene. Somehow you have a knack for disarming tensions and getting to the heart of the matter(s) very quickly. Just the fact that Peggy and Teresa and David consented to these interviews speaks volumes about their very real desire to communicate both internally AND externally. It avoids the whole Us versus Them attitude that has happened in the past, and is really a very refreshing breath of fresh air to my way of thinking.

    As Peggy mentions, you will not be able to make everyone happy of course, but the complexities of what they are trying to do is pretty remarkable in my opinion, and the fact that they are getting it done On Time is even more remarkable. They seem to be listening to the IP community pretty carefully, so I hope attorneys and agents will provide some thoughtful comments for them to work with.


  2. Stan E. Delo February 17, 2012 7:05 pm

    BTW- I discovered your interviews tab at the top of the page, and looked up your interview from last March with the then soon to be Secretary of Commerce Gary Locke, who used to be the Governor of the great state of Washington. http://www.ipwatchdog.com/2011/03/08/an-exclusive-interview-with-commerce-secretary-gary-locke/id=15703/

    In the article Gary mentions his management style of getting the best experts you can find on board, and then let them do what they are good at, after setting very high standards, and then staying in touch with them to make sure it happens. It seems to definitely have worked, and Peggy is another further example of getting creative and very effective.

    Port Townsend, WA

  3. Paul F. Morgan February 18, 2012 10:10 am

    Likewise, thanks for these interviews.

    On this subject of examiner incentives, some kind of extra reward and recognition should go to examiners willing to take up and do prompt and thorough office actions on “submarine” applications and important reissue applications that have been delayed for years [often because their more complex file histories will make for extra work for an examiner].

  4. Blind Dogma February 18, 2012 10:50 am

    some kind of extra reward

    Like Hell.

    I apoligize for the brusqueness, but you do realize Paul that that is their job, right? You want to reward someone for the purposeful delay in doing the job right, and right away, just because it may be difficult? Sorry, but that notion is offensive. The situation calls for a stick, not a carrot.

  5. Paul F. Morgan February 18, 2012 11:09 am

    A Blind Dogma all-stick approach [besides being shown to be less effective long term in management studies in general] is not going to be effective in this situation which has gone on for generations for examiners who are otherwise meeting their disposal and other established performance targets by cherry-picking easier cases to work on first, and who have both civil service and union protection from serious disciplinary actions, and who sometimes even totally avoid working on messy multi-continuation submarine applications until they leave the PTO for private practice and dump those old applications on a successor examiner. That has been aided and abetted by misscounting continuations and RCE’s as “new” applications. Only recently under Dave Kappos has the PTO made real progress on “surfacing” many such old submarine applications, especially those deliberately keep pending for many years with new generic claims beng added to cover much later inventions and products of others.

  6. Blind Dogma February 18, 2012 11:46 am


    Nowhere did I indicate an “all-stick” approach. The quickness with which you strawman my position only reinforces the notion that my position is correct.

    We do not need to coodle anyone on those facets of the job that are already part of the job.

    The problem is not holding the examiner to this portion of the job. That is relatively easy to change if the government wasn’t afraid to use the stick with the union. Don’t put band-aids on top of band-aids. Treat the problem directly. If an examiner shows he is abusing discretion by allowing difficult work to slide, take that discretion away.

    The problem is also inherent in your characterization of “submarine” which has a traditional guilty actor of the applicant. It is comepletely inappropriate to use that term in situations in which the guilty actor is the Examiner. You are compounding your offensiveness, and you are taking your eye off of the ball. Keep your focus on the problem in order to solve the problem.