In my previous article about STEPP training, I touched on a serious point— the controversy and confusion as to the extent of legal analysis examiners are authorized to do. As the comments from attendees of the course and even of the last post’s comments section show, too often something smells fishy at the USPTO. Common complaints are: (1) examiners never responding to office actions; (2) examiners misapply holdings; and (3) some inexplicable vendetta against the applicant/invention. These complaints are hopefully based on a minority of cases, yet it seems every patent practitioner (whom I will refer to as external stakeholder) has a story of examiner absurdity to tell.
At STEPP training, the USPTO administration and Supervisory Patent Examiners (SPEs) did not deny that there were problems. One SPE admitted that with any group of thousands of humans, there’s going to be some unfortunate variations in professionalism. The USPTO knows this, and thus has some avenues for external stakeholders to consider using to address the concerns of weird and wild examination. But before we get to that, let’s briefly discuss the standards the USPTO uses to evaluate patent examiners.
The examiner’s role, according to the training documents from STEPP training, is to issue patents and act as an advocate for the public. For the duties related to issuing patents, examiners are to (a) make appropriate objections (b) make only reasonable rejections and (c) help the applicant identify allowable subject matter. For the duty related to “acting as an advocate for the public” the examiner is to ensure development of a clear and complete file wrapper record. For the determination of compensation, examiners are evaluated according to four elements: (1) the quality of their examination; (2) their productivity (the amount of work an examiner performs in a specified amount of examining time with consideration given the complexity of the subject matter of the patent application and the examiner’s experience level); (3) docket management (issues related to compact prosecution); and (4) stakeholder interaction.
Though any one of these elements merits a treatise, the remainder of this article briefly touches on stakeholder interaction.
The USPTO states in the training materials that “the stakeholder interaction elements is an objective measure of the ability to provide appropriate service to external customers in areas such as returning telephone calls, reviewing and responding to emails, utilizing voicemail systems to reflect work schedules and planned absences, and directing customers to the appropriate points of contact.”
The major activities of stakeholder interaction are broken down further, and they relate to responsiveness to communications from external stakeholders (within one business day), cooperation in directing external stakeholders to appropriate offices and personal, and decorum in official communications. The training materials direct examiners to display professionalism to external stakeholders by “conducting all interviews and/or other contacts with external stakeholders as scheduled with adequate preparation, and in a courteous manner. Further no interview and/or other contact is arbitrarily or capriciously refused by the examiner.” Another stakeholder interaction activity is providing search consultation and other assistance to the public and peers. (Examiners are allowed and encouraged to assist the public in “conducting a search, short of rendering patentability advice or opinion as to whether an application should be filed.” Call one up and test it out! This may be a good alternative for a cost-conscious inventor who is still in concept phase.)
So far, so good, right? Yet, somehow a culture of Examiner v. Applicant has evolved.
There doesn’t seem to be much in examiner training to pit them against external stakeholders. No evidence there of USPTO-endorsed nefarious agenda! Examiner training directives regarding external stakeholder interaction are in-line with what the stakeholder should reasonably expect. Sometimes, the examiner is the one turning the other cheek; the SPEs know that sometimes when the attorney/agent for the applicant is advancing nonsensical arguments, it’s due to the demands of a client.
Looking back at STEPP training, there is one point that was telling in, well, how little was told. One attendee, a patent agent, asked about the low patent grant rate from TC 3600. The USPTO speaker didn’t respond, but another attendee mentioned that some companies perform linguistic analytics on drafts of patent application to give a measure of the likelihood that a patent application will end up in a TC 3600 examiner’s hand. The USPTO SPEs didn’t respond to that, but they did chuckle along with the rest of the trainees.
The discussion sooner after turned to ways to report or remedy the perception of bias during patent examination. An applicant may request that the examiner’s supervisor (or SPE) attend interviews. The applicant may also speak directly to the SPE, though it’s encouraged to not call the SPE just because the examiner hasn’t returned a communication in any time that is less than a business day. For egregious behavior, the applicants can and should report to the USPTO Ombudsman.
The Enhanced Patent Quality Initiative is piloting a program for external stakeholders to air their concerns. This program is known as the Post-Prosecution Pilot (P3). Within two months after final rejection, applicants may apply to the P3 program. If selected, the applicant will be able to make a 20-minute oral presentation to a panel of examiners to present appealable (but not petitionable) “matters or arguments directed to the outstanding record or the patentability of the amended claims as proposed.” The panel of examiners will then be excused from the conference, and the applicant will be informed of the panel’s decision (final rejection upheld, allowable application, or reopen prosecution) as to the disposition of the patent application in writing. Note that a filing of appeal will terminate the P3 process.
Sunlight is the best disinfectant, and patent practitioners should continue to write about interactions with the USPTO. We remember, however, that many examiners are truly thoughtful and mindful of the ultimate goal of protecting the public by granting valid patents. We patent practitioners should remember (1) our relationship with the USPTO is one to foster for our client’s sake; and (2) to not direct frustration with unprofessional examiners to the USPTO as a whole. Let’s not throw out the baby with bathwater. We should use avenues of remedy and recourse for egregious reasoning and publicize reasoning used by examiners, but we should also commend the USPTO for measures they take to correct problems within. We all need to be mindful to stay professional— if you’re generally caustic with the USPTO or patent practitioners, you are helping no one, least of all your practice.
 I wonder if the use of the word “prosecution,” so often associated with criminal procedure, primes this unnecessarily adversarial patent prosecution culture. Perhaps we should call it “Patent Prosecution” less and “Patent Application Examination” more.