An Examiner’s Tips For Speedier Patent Prosecution

By Lauren Anderson & Ryan Cagle
December 19, 2016

Speed conceptInteractions between patent examiners and patent practitioners are often tense.  At worst, these interactions can be an exercise in restraint with both parties thinly veiling their disdain for one another.  This adversarial approach can stall patent prosecution and run adverse to the practitioner’s purpose – i.e., to obtain the best patent claim scope possible for his or her client.  Patent practitioners thus could benefit in many instances by having a better understanding of an examiner’s expectations and approaching patent prosecution with a mind toward working with the examiner instead of against the examiner.  A conversation with an Examiner in a mechanical art unit provided the following tips for how practitioners may expedite the examination process by working (to the extent possible) within the examiner’s expectations.

Keep it Cordial

First and foremost, this Examiner, who asked to remain anonymous, stressed that when it comes to interactions between the examiner and the practitioner, “[w]e’re on the same side. So be nice.”  While everyone understands that patent prosecution can be an unduly lengthy process, the Examiner noted the importance of being patient while working through the process.  The Examiner pointed out that “[s]ome attorneys get aggressive quickly.  I’ve sat in on interviews where both sides are heated and there’s just no point in continuing the conversation.”  For the most part, the Examiner indicated that the general attitude of examiners towards patent practitioners is positive and not adversarial.  In fact, the Examiner indicated that generally examiners do not like to impede allowance of a case even if the practitioner is being difficult.

Moreover, the Examiner indicated that being patient and maintaining a cordial relationship can engender goodwill.  Specifically, the Examiner noted that individual practitioners (or even firms as a whole) can garner a reputation with one or more examiners.  Where a practitioner’s actions engender a positive opinion, an examiner may indeed be more willing to take extra steps to advance prosecution – e.g., being accepting of a greater number of Applicant-initiated interviews, being more inclined toward examiner-initiated interviews to suggest pathways to grant, or even providing courtesy phone calls to address minor matters as an alternative to another office action.

Understand Limitations on an Examiner’s Time

Many practitioners do not appreciate the changing landscape of the rules for examiners at the United States Patent & Trademark Office (USPTO).  This particular examiner has been at the USPTO for almost six years and plans to remain there.  When asked what is enticing about working as an examiner, the Examiner pointed to both flexibility and competitive pay.  Indeed, this Examiner is able to take advantage of the hotel policy that the USPTO implemented approximately ten years ago, and the Examiner presently works remotely from the West Coast.  This may be counterintuitive to the general visualization of an examiner toiling away in an office in Alexandria with hundreds of other examiners, yet working remotely has not changed this Examiner’s practice.  Since so many examiners are now taking advantage of the flexibility offered by the USPTO this should come as a relief to practitioners.  Nevertheless, practitioners should be aware of the possibility of examiners being in different time zones and possibly working different hours than may be expected.

The count requirements on examiners also affect prosecution.  For example, count requirements are evaluated every bi-week as well as quarterly.  When asked about practical effects of the count requirements, the Examiner granted that “I might be less thorough if behind at the end of a bi-week.”  Likewise, because of count requirements, “Examiners tend to be busier towards the end of quarters (end of the fourth quarter is the end of September) so interviews are more difficult to fit in.”  Being aware of such practical effects can allow practitioners to better time their communications with an examiner and avoid any adverse effects.

The necessity to meet count requirements can also benefit practitioners.  For example, the Examiner indicated that “[a]s bad as it sounds, I may be less particular and/or more likely to allow a case if I pick it up at the end of the quarter and I am struggling to make counts.”  Thus, in situations where an application may be close to allowance, it can be advantageous for the practitioner to call an examiner to discuss the particular case towards the end of a quarter.

Keep Claims Reasonable

It should come as no surprise that filing applications including extremely broad claims and/or an extremely large number of claims can be highly detrimental to speedy prosecution.  In particular, claim breadth and claim number can be construed as being a disingenuous representation of the actual invention.  This Examiner stated that, “Independent claims with a broad scope are not typically allowable and are just a waste of time.  Likewise, extremely long claim sets only for appearance’s sake increase examination time and do not generally provide any added benefit.”

The practitioner understands, however, that broad claims are often warranted absent knowledge of pertinent art.  Thus, in some instances, it can be possible to circumvent this general dislike of broad claims by including, along with the broad claim, a narrower version that falls short of being a “picture claim” but still may be more readily accepted by an examiner of being a true representation of the actual invention.

As stressed by this Examiner, most examiners are simply looking for a clear indication of what is the new, useful, non-obvious aspect of the invention.  “Claim what is new! Make it clear what the patentable subject matter is and present it in the (independent) claims.”  This can be achieved with a variety of claim drafting techniques, but one example cited by this Examiner was to “[d]raft the independent claim so that the novel feature is in the last paragraph of the claim.”  Strategic utilization of a “wherein” clause can also be an indicator of what is believed to be a key aspect of the invention.  Mainly, examiners do not want to feel like they are mining for gold while examining an application, and the clearest possible recitation of the invention is typically the best approach for efficient prosecution.

Purposeful Interviewing

Further to understanding limitations on an examiner’s time, it is crucial not to misuse examiner interviews.  This Examiner particularly noted that non-specific requests for examiner input is not viewed favorably.  So-called “fishing expeditions” for an examiner’s suggestions regarding claim amendments are considered irritating by many examiners and are not advantageous for advancing prosecution.  Similarly, a boilerplate paragraph at the end of an office action response requesting the examiner to call if the amendments do not result in allowance is generally deemed to have no effect.  “I don’t know about others, but I normally won’t call if there’s a general request for me to do so.”

On the other, pointed, well-time requests can be viewed quite favorably and be very useful in expediting examination.  For example, the Examiner stated that the most efficient use of interviews is to call after the first action with proposed claim amendments.  “I’ll usually suggest alternative amendments if I’m presented with proposed amendments that don’t work.”  In situations where the practitioner does not believe claim amendments are warranted, such timing can still be productive when the practitioner can point to clear reasons why the art is deficient.

Clearly Define Terms in the Specification

In the absence of section 112 issues that may spark a more thorough examination, it may or may not come as a surprise that examiners often do not read the whole specification of an application under examination.  This Examiner stated that one view is that the drawings and claims are most important during review of a patent application and the specification is mostly skimmed.  “The only time the specification is more closely scrutinized is to understand how an apparatus works or how components are coupled together.”

Despite this practice, the specification still plays a key role in defining the claims, and it remains imperative that claim terms are included in the specification and are clearly defined in a manner easily recognizable by the examiner.  For example, the Examiner mentioned that this can be particularly important if the specification is lacking a clear definition of a term that is being used differently than what is generally recognized in the art.  Though such a practice tip is common sense, the Examiner indicated that it is surprising how often claim terminology is not adequately supported with specificity and/or with alternative definitions.

Proofread the Claims and Specification

Contrary to what some may believe, examiners generally do not enjoy attempting to make non-substantive edits to the claims.  Since the main role of the examiner is affirming that the claimed invention is new and non-obvious, attending to formalities can dull the desire of the examiner to quickly advance prosecution.  “Oftentimes claims and the specification are filed without a thorough proofread to make sure that there are no issues that would invoke one or more of the paragraphs of 35 U.S.C. § 112.”  The Examiner verified that having to deal with a plethora of formalities before even addressing novelty and inventiveness is, at a minimum, annoying.  “I can’t stand [section] 112 rejections. Sometimes it’s every claim that has an issue.”

Importantly, the Examiner indicated that where claims are plagued with section 112 issues, the rest of the application also receives increased scrutiny.  The Examiner noted that, “I feel like this usually happens in foreign cases, but regardless it’s hard because we still have to find art.”  Adequate proofreading of an application also plays a role in understanding limitations on an examiner’s time.  More specifically, the more time an examiner spends scrutinizing the application due to section 112 issues, the less time the examiner will have in developing approaches to expedite prosecution.  “We only have a set number of hours to work on each application, so the more time we spend fixing section 112 issues, the less time we have to do a thorough search, thereby prolonging further rounds of prosecution for subsequent searching.”  Since no practitioner enjoys overcoming rejections only to have new art cited, it is important to recognize that, in many instances, protracted examination with multiple intervening searches can be avoided by the simple act of providing a “clean” claim set and specification.

Make Efficient Use of After Final Procedures

It is commonly known that after final procedures, such as the appeals process, tend to cause prosecution to drag on.  While the Examiner indicated that appeals are considered, “a little annoying,” most examiners understand why appeals are necessary.  Thus, one should not hesitate to file an appeal where, “the Examiner and the practitioner understand each other’s viewpoints, yet have reached an impasse.”

To make the appeals process more productive, this Examiner advised filing a Pre-Appeal Brief Conference Request in order for “both sides to gauge where we stand.”  In terms of the panel that convenes to review a case under appeal, which consists of an examiner, the examiner’s supervisory patent examiner (SPE), and another SPE, the Examiner indicated that the panel is “generally pretty objective and not skewed towards the examiner’s side.”

Examiners also appear to have a generally favorable view of the After Final Consideration Pilot (AFCP) 2.0 program.  While AFCP 2.0 requests do not fulfill counts for an examiner’s count requirements, the Examiner stated that AFCP 2.0 requests are generally considered to be a “win-win.”  Despite this view, AFCP 2.0 requests are often denied in an Advisory Action for several reasons, including that the request provides inadequate time for the examiner to search.  When asked if there is any correlation between denying AFCP 2.0 because the requests do not fulfill count requirements rather than the explicitly stated reasoning, the Examiner indicated, “Personally, I don’t require RCEs when an AFCP 2.0 is filed just to meet count requirements.  An AFCP 2.0 request gives me some time hours, which is still beneficial, although it does not help me meet my count requirements.”  Thus, it can be useful to forego any cynical feelings about examiner motivations and take advantage of the option to file an AFCP 2.0 request if claim amendments after a final office action are warranted.

The Author

Lauren Anderson

Lauren Anderson is a patent attorney at Womble Carlyle's Raleigh, NC office. She has particular experience guiding tech industry clients. Lauren helps clients prepare and prosecute both domestic and foreign patents in such sectors as medical devices, aviation systems, aerospace and defense components, postal processing, industrial products, computer hardware, software, telecommunications, computer networking, and imaging technologies. She also counsels clients on freedom-to-operate issues, as well as validity and infringement analyses.

Lauren Anderson

Ryan Cagle is registered patent attorney at Womble Carlyle's Raleigh, NC office. He is a member of the Chemical/Pharmaceutical/Biotechnology Patent Team of Womble Carlyle's Intellectual Property Group. Ryan's practice focuses on assisting clients with developing domestic and international patent portfolios to maximize market protection as well as leveraging the patent rights to further the clients' business strategies. This includes providing advice and assistance in obtaining patents in conventional locales, such as the U.S. and Europe, as well as in emerging markets, including China, India, South America, Southeast Asia, and the Middle East.

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 33 Comments comments.

  1. Night Writer December 19, 2016 12:34 pm

    Generally good advice. It is sticking to the main highway that one hopes to stay on. I have had some examiners tell me that the problem with AFCP 2.0 is that it gets docketed to get done so quickly that it doesn’t give them time to work on it.

  2. Anon December 19, 2016 1:37 pm

    Contrast this article (mechanical arts) with the past series of articles by Mr. Quinn in the software and business methods worlds and see what (if any) differences in suggestions would be appropriate.

  3. Night Writer December 19, 2016 2:18 pm

    @2: Well, for AU 3600 I always ask how many applications they have allowed since Alice. Normally the answer is zero.

  4. Independent Inventor December 19, 2016 5:44 pm

    Thank you both for your interesting and informative article.

  5. To the board we go .... December 19, 2016 6:38 pm

    Pretty good advice. As an Examiner, I would add a few things that can speed up prosecution

    Alice……
    Why are you yelling at me?! I am simply doing exactly what I’ve been trained/told to do. I’m not an attorney. And even attorneys disagree on whats a proper Alice rejection. Stop thinking that this is my big plan to get out of work and specifically stop you from getting a patent. Your problem is with management and not with me. I long for the days of “non-transitory.”

    If I’m making a clear error, and not agreeing with you in an Action I issue, it very well could be the case that I didn’t understand what you’re arguing. Feel free to arrange an interview with me and POLITELY explain your point of view. I am human and make mistakes. I’m willing to correct clear errors.

    Examiners hate claims that appear to be direct translations from foreign applications. The claims have significant antecedent basis and 112 issues. It takes away from valuable time looking for actual art.

    Don’t cancel all your claims and list new ones after a first Action. Also, do you really have to amend every claim from “the” to “said” and back to “the” again?

    Antecedent basis is important to me.

    Do you really need 50 claims, when most could just be in markush format?

    Why can’t you just claim what your actual invention is? Nothing more, nothing less.

    In your Amendment or an interview, please try and specifically state where any amendments are supported in the specification. For my docket, I find way too much time is wasted trying to find support for an amendment. This takes away from valuable time actually looking for art.

    Being cordial in any type of communication is important. I don’t consider you an adversary, and you should’t consider me one either. Also, you may feel good when you insult me in an Amendment or an Appeal Brief, but trust me, it doesn’t move your claims to allowance. When insulted, most Examiners have no problem working a little “voluntary” time examining your claims just to make sure there is no art that reads on them.

    If you are rude to me in an interview, the only thing you will hear is “I’ll consider your arguments and respond in an interview summary form.” Treat me with respect and I’ll return the favor. Constructive interviews can move prosecution forward.

    Keep your responses short and to the point, as much as can be. Arguing just for the sake of arguing will not get your claims allowed.

    If at all possible, never elect a restriction requirement over the phone. There are too many reasons why I say this to list here. Also, unless you have a very good reason, don’t elect with traverse. Everyone know you’re not going to petition. It’s just a waste of time. This comment is moot if you actually intend to petition.

    Your claimed invention and your actual invention are two different things. I know my rejection may not necessarily line up with your actual invention, but your claims are so broad, I have no choice but to reject them with the art I am using.

    I’ve been doing this job for a long time. I’ve had the same SPE for many years. I know what my SPE requires of me, and therefore only in rare circumstances will my SPE disagree with me. Trying to play my SPE against me will not work. This comment is moot if the examiner is being unreasonable.

    Regular after-finals will almost always be denied entry. 2.0 after-finals will usually only lead to allowance if discussed before hand. I have limited time to act on the amendment, and limited time to search. It is almost never an amount of time that I would actually need.

    In my long tenure at the PTO, I can count on one hand the amount of times I reopened prosecution after-final.

    At the end of every quarter, I’m actively looking to allow cases. While I won’t agree to just any amendment, I am more willing to make an Examiner’s amendment for allowable subject matter. Contact me at least 2 bi-weeks before the end of the quarter. Know when the quarter ends! Give yourself enough time to hear from your client. You wont get an immediate interview if you contact me the last week of the quarter.

    I get very suspicious when you submit an IDS that lists dozens of references that have nothing to do with your invention, except maybe the citation that is cited in the middle of the IDS.

    Also, I know that there are bad Examiners. I get very angry when I’m grouped in with them. Therefore don’t insult all Examiners with your comments on web pages.

    Please understand that in most situations, an Examiner is issuing an Action that is directly related to their training. Having an honest disagreement about a rejection, and an Examiner issuing a rejection that is clearly in error, are two different things. Applicants are too quick to fault an Examiner in a rejection when according to USPTO policy, the rejection is correct. Your issue should be with management, and not the Examiner.

  6. To the board we go .... December 19, 2016 7:06 pm

    I probably should add that I find interviews VERY helpful and can almost always lead to at least amendments that overcome the current rejection. A lot of the time allowable subject matter can be determined as well.

    Based on docket management and count requirements, by the time I pick up a case, I don’t always have time to call for an interview. And most times, amendments I request are declined.

    Your best bet is to contact me BEFORE you file your amendment to request an interview. Have proposed amendments ready. When this happens, as I said above, more often than not, an amendment that overcomes the current rejection can be determined. A lot of the time, allowable subject matter can be determined too.

    Be ready to point out where the amendment is supported. Too many times attorneys have amendments, but then struggle to point out where there is support for the amendment.

    Remember, I also want to move prosecution forward. As soon as possible I want to allow your claims or have you abandon them, which ever is appropriate.

  7. Curious December 19, 2016 7:57 pm

    Alice……Why are you yelling at me?
    I rarely discuss 101 stuff in interviews. It just detracts from the discussion on the prior art.

    I am simply doing exactly what I’ve been trained/told to do.
    LOL … it is amazing that I have had dozens and dozens of patent applications that are directed to exactly the same inventive concept as Cybersource and SmartGene. If we get mad at you, it is because we are frustrated with the incompetent trainers/QAS/etc. — and you are our only link to them. BTW — what really frustrates me the most is dealing with non-Alice rejections in which identical language is accepted by some Examiners and deemed non-acceptable by others. This also seems to vary month-by-month. You cannot image how frustrating it is for us to deal with varying requirements.

    Why can’t you just claim what your actual invention is? Nothing more, nothing less.
    That presumes we have perfect knowledge of the prior art. We don’t. That also presumes we know how you’ll (mis)interpret our claim language and apply the best prior art. We claim what we think is inventive. Sometimes it is, sometimes it isn’t. Also, for us, it is better to claim too much because it is much easier to further limit the claim than further broaden the claim.

    When insulted, most Examiners have no problem working a little “voluntary” time examining your claims just to make sure there is no art that reads on them.
    Interesting — we get better examination when you are insulted?

    In my long tenure at the PTO, I can count on one hand the amount of times I reopened prosecution after-final.
    Which is why I never file them and shake my head at attorneys who do so. Either appeal or file the RCE & Amendment.

    I get very suspicious when you submit an IDS that lists dozens of references that have nothing to do with your invention, except maybe the citation that is cited in the middle of the IDS.
    We cite what has been reported to us in a search report. I’ve been doing this a long time, and I’ve never heard even a rumor of an attorney trying to bury a reference in a big IDS. My clients interests are best served when the best prior art is considered. I would much rather have a valid patent over just a patent.

    when according to USPTO policy, the rejection is correct
    I prefer that the rejection is correct according to the law — don’t presume that USPTO policy = the law.

    I find interviews VERY helpful and can almost always lead to at least amendments that overcome the current rejection
    I find Examiner-initiated interviews to be far preferable to applicant-initiated interviews. Otherwise, I propose an amendment (that I don’t think is necessary but I want to move things along), we agree it overcomes the prior art, and then I get another bad reference. I’ve played that bait and switch game enough to the point that I stopped playing it altogether.

    And most times, amendments I request are declined
    Just pick the right ‘real parties in interest.’ Also, be reasonable with your amendments. Adding a couple of words here or there to tighten up supposedly loose language is OK. However, if you are asking for a picture claim with limitations that do nothing to overcome the prior art, then that usually is a lost cause. Claims are intended to distinguish the invention over the prior art — not explain the invention.

  8. Night Writer December 19, 2016 9:24 pm

    @5 and 6: you do sound like a lot of the examiners I deal with. You sound basically professional, but you shouldn’t treat the claims differently depending on whether the attorney is rude.

  9. To the board we go .... December 19, 2016 9:48 pm

    Curious….

    I’m really not trying to be rude. However, your comment is a reoccurring theme from a lot of attorneys. You make the comment about receiving another “bad” reference from an Examiner. You know, it doesn’t matter which Examiner issues the rejection, it doesn’t matter that the pre-brief conference decision is to proceed to the board, it doesn’t matter that the board affirms the rejection. Hell, I am sure it wouldn’t even matter if the Supreme Court ruled against you. Some attorneys can only say that everyone is wrong but you. The overall allowance rate is around 60-70%. But attorneys make it sound like every Examiner at the PTO is issuing bad rejections in every Action and not allowing anything. I can’t tell you how many times I have responded to an Appeal Brief that was so convinced that I was breaking every rule, misinterpreting every law, no reason to combine, piece meal examination, etc., etc., etc., only to be affirmed by the board. Of course they say that the board is wrong too. I’m not going to pretend that every Examiner, art unit, and work group is great. However, sometimes the problem is you, and not the Examiner.

    The language accepted by Examiners varies month by month because sometimes our training seems to vary month by month. We are as frustrated as you are by this.

    As far as insulting Examiners to get a better examination….I never thought of it as a strategy. Why don’t you give it a try and see if it works. You can update us on your success, or lack thereof.

    As far as claiming your invention, a lot of claims I see filed are so broad I can randomly pick a reference that reads on them.

    Regarding IDS filings, the fault in your comment is believing since you don’t burry a citation in an IDS then no other attorney does. In any given month I may deal with a dozen different attorneys and in-house counsel. I, and multiple Examiners I know, believe burying a citation does occur. Maybe not often though. You would be foolish to think that every attorney is as honest as you. That’s like me thinking every Examiner takes their job as serious as I take mine.

    You prefer the rejection is correct according to the law? So do I. However, what the PTO tells their Examiners is the law. Your comment appears to say, as an Examiner, I should just disregard everything that the PTO tells me to do and do what you tell me to do because your correct and the PTO is wrong when interpreting the law. I don’t just make things up as I go along. I follow the training the PTO has provided. If you don’t like my rejection, assuming I follow PTO policy, your issue is with the PTO and not me.

    I’m sorry you don’t find Applicant initiated interviews helpful. As an Examiner, if an Applicant proposes an amendment, I try to be honest with them and let them know if I think I can easily find another art to read on the amendment. Most of the Examiners I know do the same.

    I have no problem with your last statement about how claims are to distinguish the invention and not explain it. However, you make it sound as all attorneys are writing these wonderful inventive claims that Examiners are just rejecting out of hand. Your view is limited to your practice and the attorneys you know. I issue on average up to 10 or more actions every bi-week to 10 different attorneys. I think I have a better view of how attorneys write claims and respond to actions than you, on average.

  10. To the board we go .... December 19, 2016 10:12 pm

    Night Writer….
    I try and be fair in all cases I review. I never want to punish an applicant because of their attorney. When I look at a case, I’m always thinking that I’m the middle man between the applicant and the public. I want to treat both fairly and ensure both get what they are entitled to. Not all examiners are like me. I was just trying to give general advice to further prosecution. Not being rude, on both sides, is beneficial to everyone.

    I have a good working relationship with most attorneys I work with. Most are professional and, while they don’t always agree with me, understand my position. I am the same way with them.

    In fact, I actually like pretty much all the attorneys I work with. We’ve had good conversations about kids and family, work environment, etc. They usually ask about the telework program and current trends in examining. I ask about work/life environment at their law firm or company. Sometimes we talk more about personal stuff than we do about the claims. I think this good because we develop professional relationships that help move cases along in prosecution. They know they can call me and be completely honest with me about what they are thinking, and I feel the same with them. There is no trickery or subterfuge. I wish all examiners were like this. I’m embarrassed by the bad examiners, and don’t like how they reflect on me. But, unfortunately that’s just a fact of life.

  11. Night Writer December 20, 2016 6:42 am

    @10: To the board we go…

    I basically agree with you. I like most of the examiners I deal with and think about 90 percent of them are professional and doing the best they can with the time, education, and resources they have. I respect them and often end up in personal conversations with them. There are some bad ones that play all sorts of unethical games that I have to deal with.

    I also do a lot of international prosecution so I speak with examiners at the EPO and deal indirectly with examiners from many other countries. The US examiners do a pretty good job in comparison with the other countries. The one big area that we are deficient in is searching for the best prior art. The EPO does a better job. There are some wicked smart examiners in other countries who understand the tech very well.

    But, I would say the one thing that bothers me about attorneys in the US is that they often lump the 90 percent with the 10 percent. I don’t. I always try to start off with an interview after the NFOA and give the examiner the benefit of the doubt that he/she is an honest actor. Some of the stuff I’ve seen examiners pull is unbelievable. And sometimes they admit it on the phone. Like, yeah, I know it isn’t fair but I needed the points. Or, I know it is crazy, but the supervisors are not going to let me allow any case. Or, I know it doesn’t make any sense but my SPE won’t let me allow anything.

    I basically just do prosecution now, so I do a lot of interviews. Maybe 150-200 a year. My advice to the PTO: improve search. That is the one area that the PTO is way behind in compared to some parts of the world. (As to the EPO examiners being better than the US examiners–no they aren’t. There are many games to get around the EPO examiners and they know it. They are basically lazy and are willing to allow anything as long as the protocols are followed. Many US examiners focus on the invention and are willing to allow anything as long as it non-obvious over the cited art.)

  12. Night Writer December 20, 2016 6:50 am

    And, to the board, what you have to understand about the attorneys is we have to deal with that 10 percent. They cause us a lot of trouble. We have to appeal them and go to their SPE–or go to the ombudsman. I have had examiners yell at me on the phone. Obviously they were under a lot of stress and maybe the office should train them better and monitor them better.

    The bad ones can often cost us a lot of hours that we can’t bill. (Like a bad one will just make a bad rejection and stick to it. We have to appeal and sometimes we see how bad the system is in that the pre-appeal brief is rejected (probably the other two just listened to the one) and then we write the brief and back to prosecution it does.)

    Anyway, the bad ones have so many ways of making our lives miserable. The work for the other 90 percent is all about the same.

  13. Night Writer December 20, 2016 6:52 am

    Or the bad ones threaten you with misconduct and to report you. I have had that happen a couple of times. No merit to the charge. One threatened me saying that my response was non-responsive and was sufficient to report. Really crazy stuff.

  14. To the board we go ..... December 20, 2016 8:11 am

    Night Writer….

    I agree with you about the EPO and searching. I have picked up cases before and was sure the claims were allowable only to find great art in a search report. Those guys/girls are pretty amazing at searching. We do train with them, and in my opinion, we should train more with them.

    The PTO is doing a lot to try and improve searching and identifying the best prior art. I, and others, have spent countless hours in my work group implementing and training other examiners on the cpc and other search strategies. The amount of resources in my work group for examiners on searching and finding prior art has grown exponentially in the last 18 months. New resources are still being added. We also have examiners that spend most of their time training others.

    I don’t think this is true for all work groups. It’s very frustrating to work so hard on something only to see other work groups do the minimum on the same project.

    Also, it’s an open secret at the PTO that there are bad examiners. This is discussed ad nauseum in meetings and private conversations.

    There are many protocols to identify these examiners. However, there are two issues. First, the protocols are not followed. Second, even when the protocols are followed, there are rarely any repercussions.

    I completely understand the frustration many applicants and attorneys have when dealing with these examiners and their SPEs. This feeling is shared by many examiners and SPEs at the PTO as well. Unfortunately, for reasons we are all aware of, this will not change anytime in the near future.

  15. Don Champagne December 20, 2016 9:07 am

    Good article, based on my 17 years as an examiner, which ended in December 2014.

  16. Buckboy December 20, 2016 9:34 am

    Excellent article. It provides some really helpful insights. It is good to hear the perspective from the other side.

  17. Curious December 20, 2016 9:49 am

    But attorneys make it sound like every Examiner at the PTO is issuing bad rejections in every Action and not allowing anything.
    My guess is that 90% of the 102 rejections I get in first Office Actions miss the mark. When it comes to 103 rejections, it is easier to find all the limitations but I see combinations of typewriters and blenders that magically arrive at my claimed computer-implemented process (OK, a little hyperbole there but not that much). I don’t know what technology you are working with, but I have worked in very many different fields, and the quality of examination varies GREATLY.

    only to be affirmed by the board
    LOL. If I was an examiner, I would go to the Board EVERY SINGLE TIME. The reversal rate (combined reversal and affirm-in-part) at the Board has gone from about 63% in 2000 to 42% in 2016, and I’ve seen no difference in the quality of appeals going up. The reversal rate dropped significantly once Dudas became Commissioner (he of the reject-reject-reject era). It rose when Kappos replaced him, and now with Lee, it is dropping again. Also, if you dig deeper into the numbers, there is a vast disparity between APJs. If whether you win or lose on appeal has much more to do with the APJ writing it and the Commissioner at the time of the Decision than the quality of your arguments, then I wouldn’t put too much credence in the result as to whether your arguments were good or not. Let me rephrase: the Board is not a neutral party. If the guidance from up high to Corp of Examiners is that more applications need to be rejected, the Board gets that same guidance.

    a lot of claims I see filed are so broad I can randomly pick a reference that reads on them
    Perhaps, perhaps not. I see a lot of work transferred in to my firm from other counsel. I have been amazed sometimes to see claims so incredibly broad that I wonder how could any attorney reasonably think that these were patentable. Then again, I’ve seen claims so narrow that I’m amazed that the attorney couldn’t have said with 60 words that they wrote with 250 words. However, I’ve seen lots of rejections that overlooked that one key element that distinguished the invention over the hundreds of other publications in the field.

    However, what the PTO tells their Examiners is the law
    No — its not the law. It is guidance. The PTO doesn’t get to make law — period. If you want to understand the law, read the case law. Don’t rely upon the misleading snippets produced by PTO lawyers that are taking direction from higher ups (see comments above about Dudas, Kappos, and Lee). There is a lot more nuance in the Court decisions than actually make it into the USPTO’s guidance (e.g., see my comments about SmartGene and Cybersource).

    I think I have a better view of how attorneys write claims and respond to actions than you, on average
    That has nothing to do with my suggestion regarding proposed claim amendments.

  18. KenF December 20, 2016 11:03 am

    There is a bit of rose-colored glasses by the examiner who provided tips for the original article, but in general the examiner who did so and To the Board We Go seem to be ones that I could work with. That said, TTBWG’s comment about not re-opening prosecution after final is disturbing. Examiners DO make mistakes, and it is wasteful of time and money to have to appeal or file an RCE to get an examiner to acknowledge that. Additionally, there are MANY examiners (and practitioners, I must admit) that form the basis for the negative impressions on both sides of the aisle. I agree that if the examiner has a valid point, the practitioner/client would be better served accepting that the sky is blue and water is wet and figuring out how to amend around the art or dropping the case. Similarly, the applicant would be better served if the examiner accepts that the sky is blue and water is wet instead of digging in their heels, twisting a single sentence taken out of context from the specification to provide an asinine interpretation of a common word just to make it fit the reference, pulling stuff out of their nether regions, etc., all to avoid admitting they’re wrong (as in the case I have at the Board after three RCE’s, four finals, five non-finals, and a whole lot of bending over backwards to appease the examiner to avoid having to appeal). Furthermore, I just had a case where the “response” to succinct argument as to why reference does not show the claimed invention (as clarified by amendment) was gobbledygook. (The Office needs to place more emphasis on hiring examiners who can carry on a debate, i.e., understand the rationale of a response and either counter it — IN WRITING — intelligently and INTELLIGIBLY or change their own position.) When I called the examiner to arrange an after-final interview just to get clarification of his response, he summarily refused to grant it. He told me he doesn’t do after-final interviews — period — and that I should respond in writing. When I told him I can’t respond if I can’t understand the point of his counter-argument, he told me to “do the best [I] can.” That is the b.s. I see far more frequently than the helpful, results-oriented service from examiners I suppose I would see working with the “tipster” as well as TTBWG. For what it’s worth, there are “hacks” on both sides of the “aisle.” Also, for what it’s worth, when I work with an examiner who goes above and beyond, is helpful, and exhibits desire to do good work and allow meaningful claims to which the applicant is entitled (i.e., limited only by the spec’n and the prior art (in re Rasmussen) and not by the examiner’s nonsense), I will actually CALL the examiner’s SPE to let the SPE know. Sadly, however, over 25 years of practice, I’ve had more need to call SPE (and even ombudsman and/or Group Director) to put a stop to the nonsense the purported bad apple is giving me….

  19. To the board we go ... December 20, 2016 12:39 pm

    KenF…

    Just to clarify, if i make a clear error in a final, I will reopen prosecution based on an after-final response. I think there are three reasons I don’t reopen often. First, I don’t make a lot of clear errors. Second, some of the errors I do make are unknown to me and not caught by the Applicant and Applicant just files an RCE. Third, Applicant knows of the error but finds filing an RCE the path of least resistance, and therefore doesn’t argue against the error. Maybe they feel like I can easily find a different art and therefore want to amend and move the case forward. Maybe they have had bad experiences with examiners and feel like I will only accept an RCE.

    As far as the after final 2.0, I was very hopeful when the program first started and took advantage of it a lot. But I almost always took significantly more time than was allowed. If allowable subject matter is agreed upon after a final rejection, I don’t require an RCE, but instead encourage the filing of a 2.0 after final.

    I will say one thing though. Balancing quality and quantity, Examiners make mistakes. I am not immune to this. The question is how the examiner responds to the mistake. Mistakes I’ve made are not personal and I wasn’t being vindictive, even though it may appear that way in the Action. Most times an interview clears things up quickly. So, I always recommend attorneys conduct interviews early and often.

    Yes, some examiners are gaming the system, not good at their job, and don’t work the hours they claim. This causes significant headache and expense for Applicants. The Office should dedicate more resources at this problem. But instead, the Office seems happy with just alerting examiners to very minor issues in Actions. As a trainer I can tell you it’s very easy to identify these examiners by simply reviewing their art rejections. The rejection of the independent claims tells you a lot about an Examiner’s quality. But the reviewers are on production too, and are trying to quickly identify any error in an Action and move on to the next Action. Its a revolving door with no solution in view.

  20. Ternary December 20, 2016 1:02 pm

    Examiners have incredible powers to prevent allowance of a case. While they have possibly (and hopefully) a better understanding of the patent system than the inventor, they are not always as experienced in the technology side as the inventors. Not carefully reading the specification, as admitted above, does not really help the Examiner in assessing the basics of an invention.

    I have had many cases of mathematics heavy inventions where I needed extensive discussions with inventors to fully understand and distill the essence of the invention. Examiners in some of those cases have issued rejections that made absolutely no sense and appeared to be deaf and blind to any argument. Without exception the rejections were 103s, wherein nonsensical combinations of un-combinable art were made, usually with a vague and unsupported motivation of “makes the combination more efficient.” These motivations should be forbidden when not provided with reasoning why and what the improvement is.

    The inventors (as far as they fully grasp the idea of “obviousness”) are usually extremely puzzled by the reasoning behind these rejections. “This is not how it is done,” must be among the most received comments on an obviousness rejection by inventors.

    This taught me to include rather stupid “escape hatches” into the spec that allow me to amend the claims and to overcome rejections that should not have been made in the first place.

    KenF @18 identifies this issue: “The Office needs to place more emphasis on hiring examiners who can carry on a debate.” I fully agree. Even stronger, Examiners must want to be convinced and should be trained to that effect. Really, it is not personal, it is business. I can try to prepare for Alice and other rejections, in ways as suggested by Gene and others. But it is hard to prepare for an Examiner who is unwilling or unable to engage in a serious technological debate and management and staff who allow this practice of unresponsive rejections to continue to meet production goals. It makes the prosecution process often appear capricious and arbitrary, which it probably is for many independent inventors who give up on patents in disgust.

  21. Benny December 20, 2016 1:25 pm

    Ternary,
    Examiners also have the power to grant meritless claims without doing a thorough prior art search, and sometimes they do. I doubt many examiners fully appreciate the subsequent huge financial burden to the relevant industry affected.

  22. step back December 20, 2016 5:43 pm

    To the Board @6

    Probably the best advice you gave here (@6)!
    Yes, call the examiner. Discuss the details. Like emails, written Office actions are often terse and undecipherable. An interview can help clear up misunderstandings (on both sides). 🙂

  23. Eric Berend December 21, 2016 3:59 am

    Ah, yes: He-e-e-e-e-eere’s ‘Benny’, along to insinuate his anti-patent agenda, noxiously implying some kind of automatic “huge financial burden” should ensue from normal patent examinations; in an milieu where whole Art Units of the USPTO have suspiciously low allowance rates, on the evidence adduced in this and other fora; and, without mentioning any other necessary factors that must functionally comprise such “burden”, should it ever arise. To pursue such a prosecution, requires parties with sufficient interest and resources. Not many actual inventors left, there.

    Are you paid by the word, ‘Benny’? Or, is it your allegiance to the current, foppish, madding crowd of free-software-owns-the-world-and-anyone-in-our-communitarian-way-gets-run-over: ignorant agents, pomps and props incessantly repeating a ‘patent troll’ nonsense canard that serves the interests of only large corporate infringers?

  24. Benny December 21, 2016 5:16 am

    Eric,
    You are on to me. I indeed earn a salary. For what, and from whom, is not your concern. From your response, I could conclude that you have never seen a granted claim against which you could find 102 prior art in a few hours intensive work, and that you do not know the actual cost, in time and legal fees, required to take an IPR from start to finish. An extra hours’ work by an examiner could save hundreds of thousands of dollars downstream.

  25. Night Writer December 21, 2016 7:01 am

    @24: I agree that the weakest part of the patent system is the prior art search. I have said it hundreds of times for many years.

    Reality: a good patent attorney wants claims that are patentable over the cited art. Get the best cited art and you are a long, long way to improving patents.

  26. Night Writer December 21, 2016 8:08 am

    @To the board we go

    One thing too is that some practices should be monitored and punished. For example, I get a lot of restriction requirements that are clearly the examiner just milking the application for points. They want to restrict it so you can only get half your invention and will have to file a continuation. This is definitely a trick some of the examiners play.

  27. Curious December 21, 2016 9:06 am

    I could conclude that you have never seen a granted claim against which you could find 102 prior art in a few hours intensive work, and that you do not know the actual cost, in time and legal fees, required to take an IPR from start to finish
    You do realize that ex parte reexamination is still available? If you really have a good 102 reference — not one that you have to squint at to make it a 102 — then you can get that application invalidated for under $20K depending upon the complexity of the technology and how many claims you want to tank.

    An extra hours’ work by an examiner could save hundreds of thousands of dollars downstream.
    BTW: $20K << "hundreds of thousands of dollars." If you really want to save money, send the opposing counsel a copy of the 102 prior art. If it is as good as you think it is, you'll never hear from them again. If you are efficient and the reference is as easy to find as you say it is, you can probably get that out the door for $2K.

  28. Benny December 21, 2016 9:24 am

    Curious,
    Send the opposing counsel a copy and expect peace in our time? Never tried it, have you? It doesn’t work, believe me, and don’t bother asking how I know. If any attorney were honest enough to take it without an argument, they wouldn’t be in the business.

  29. To the board we go ... December 21, 2016 12:27 pm

    Night writer ……

    My TC averages very few restriction requirements a year per examiner (low single digits). If you’re getting a lot of them, I wonder if it’s limited to specific art units, or very few Examiners. I don’t know any examiner that issues one to get more counts. Most Examiners don’t think that far ahead. Our views are mostly limited to the bi-week and quarter. But I imagine some Examiners issue restrictions in order to do less work.

    The question is, if it’s more work to examine all the claims, how close is this to being a proper restriction requirement, since one of the requirements for a restriction include there being a serious search burden. Determining if there is a serious search burden can be subjective.

    But yes, I have seen some restriction requirements that I would say are clearly improper (i.e., requiring a restriction between and apparatus and method claim). I haven’t seen many though. Mostly because not many restrictions are issued.

    And yes, these Examiers should be retrained to ensure they understand the requirement for a proper restriction.

  30. Goes 2 11 December 21, 2016 1:15 pm

    Other tips I have heard are:

    don’t recite case law to the Examiner – cite the MPEP

    Don’t provide boilerplate paragraphs of case law or MPEP for defining anticipation or obviousness – actually cut boilerplate to a minimum

    Place strongest arguments first in your response and be succinct

    Your response needs to limit file history estoppel – but also realize that you have to be persuasive – don’t just file a response of the Examiner is wrong without explaining why

  31. KenF December 21, 2016 1:56 pm

    @ 29 TTBWG:

    I have seen many cases (in the electromechanical arts) where the slightest suggestion that an examiner would have to exercise one additional thought is seemingly enough for the examiner to claim “undue burden.” I’m talking about something at the trivial level such as “wherein the tires are whitewall tires” versus “wherein the tires are radial tires.” (I would never claim at that level of detail — on its face no point — but throwing it out to describe the level of parsing to which some examiners will go.) The latitude given examiners in this regard is very much the same latitude given examiners in re AFCP 2.0 to assert that they can’t do any additional work in allotted time. And a major, major, MAJOR cause of problems is fact that the examiners’ union mandated that it be put into the examiners’ individual discretion without ability to review by superiors. So if an examiner is a crank-turner to begin with (or a “count monkey” as I refer to them), then the benefit of AFCP 2.0 is completely illusory.

    As for examiner-bashing, I doubt many (if any) practitioners come into the process expecting to hate on the examiners. After all, we know that we attract more flies with honey than vinegar, and it is counterproductive to be antagonistic with the examiner from the start. But when we run up against stupidity — yes, a lot of what we see is outright stupidity, as pejorative as it is for me to say that — and asinine positions and a system that is gamed over and over and over so that examiners can get by with as little WORK as possible, it starts to embitter us and predisposes us to come into the process with that sort of mindset.

  32. KenF December 21, 2016 2:01 pm

    @ 30 Goes 2 11

    don’t recite case law to the Examiner – cite the MPEP

    MPEP isn’t law; caselaw is. So if there’s a case that is on point for a basic proposition, I cite it (along with MPEP section where it’s cited)

    Don’t provide boilerplate paragraphs of case law or MPEP for defining anticipation or obviousness – actually cut boilerplate to a minimum

    Amen! Makes the response look like the practitioner is trying to “out-lawyer” the examiner…….and like the practitioner is trying to impress the client or “fluff” the response because he or she doesn’t have solid argument. The underlying rules of the game don’t need to be explained…..

    Place strongest arguments first in your response and be succinct

    Duh! 🙂 (Not a swipe at you. It’s so obvious, but sadly so overlooked by many!)

    Your response needs to limit file history estoppel – but also realize that you have to be persuasive – don’t just file a response of the Examiner is wrong without explaining why

    Like I said, there are hacks on both sides of the aisle. If an examiner has said reference A shows X, a response that says nothing more than “no it doesn’t” is a waste of time and client’s $

  33. Night Writer December 22, 2016 1:55 pm

    Actually, the examiners are supposed to have to follow the MPEP by executive order. That is one of my pet peeves that I have to go to a SPE/TC sometimes before the examiner will behave and do what the MPEP says.

    And, to all the prosecutors out there—if it says it in the MPEP, the examiners are bound by it-not us–but they are. And if it is in the MPEP and they aren’t doing it, then start complaining up the ladder and soon enough they will do it.