EDITORIAL NOTE: The following op-ed was submitted by a retired patent examiner who contacted us recently with a variety of thoughts on fixing the United States Patent and Trademark Office, but who wanted to remain anonymous. An invitation to publish an op-ed under the pseudonym Sue D. Nym was accepted, and his/her thoughts follow.
In an article published on April 23, 2017, Gene Quinn wrote about President Trump’s workforce reduction plan and his proposal for what it should mean for the United States Patent and Trademark Office. I agree with many of those proposals for reducing the size of the USPTO in accordance with the mandate set forth by President Trump, but believe that concentrating on a reduction in the number of patent examiners is not the only or necessarily the best approach. Based upon personal experience, I propose the following points for consideration:
- Review of USPTO middle and upper level management to determine who assigns junior, senior, primary and supervisory patent examiners to specific art units and reassignment of Office personnel. I’ve known examiners with PhDs in compound chemistry who have been assigned to art units that examine agricultural compositions even when these examiners specifically requested placement in a chemical compound area (they were told no positions were available, only to learn that others subsequently were hired to fill openings in those areas); examiners with PhDs in molecular biology who began their USPTO careers by examining hoses and tires (a minimum of about 30% of examiners were known to experience such substitutions); and supervisory patent examiners with advanced degrees in biological sciences assigned to head art units that dealt with subject matter that included chemical compounds and compositions for which they lacked understanding (the latter leading to examiners training their supervisors, errors incorrectly charged to examiners that were rescinded and occasionally second, “no count” Office actions issued). Clearly these assignments do little to capitalize on examiners’ expertise, and waste dollars spent in their retraining.
- Related to this is the decision of at least one senior examiner who retired earlier than planned, because cases in his area of expertise and for which he collected a treasure trove of prior art were being assigned to examiners in other art units, while he received applications indirectly related to work he had done for years. In the past, examiners were assigned to and retained in specific subject areas so that they developed an expertise in that field. Today, examiners are often reassigned to or given applications outside their fields, thus requiring additional training and time spent per case, under the guise of “broadening” their examining experience;
- Allocation of production “count” requirements to different art units. In the past examiners working in the biotechnology arts were allocated 20+ hours per application from initial examination to final status determination, i.e., allowance or final rejection, while examiners in chemical compound arts were expected to do the same in a 12 hour period, and examiners in areas of computer sciences were allocated numbers of hours in excess of both of these. Promised review and revision of these hours per case have been consistently tabled and have not occurred for decades;
- Software programs. These often are rolled out to examiners prior to having their ”bugs” eliminated, while previously-used software is inactivated. The examiners are forced to use the new but deficient software, for which training is woefully inadequate; an example on-point is replacement of the eDAN system by PE2E;
- Counts, counts, counts. This is the mantra of all examiners among whom it is common knowledge that, for all the talk of examination quality, it truly is only numbers that matter. Production is the “bottom line” for retention of any examiner. Patent Academy training sessions and first year of on-the-job training serve to cull from the ranks examiners anyone who spends too much time searching for the best relevant art in favor of any art that can be cited against an application. This practice minimally removes 2-5% of people initially hired as examiners, while still others leave or are transferred to other areas within the USPTO based upon their inability to keep up with biweekly production demands; and
- Trademark Examiners; Management. Has anyone considered removing trademark examiners, who also constitute part of the USPTO? And especially, where and when has there been a review of senior and mid-level management positions (other than for changes in political administrations) that command higher salaries compared to examining positions, and justify their existence by creating new ways of Office operations that eventually meet their demise for lack of success? Where does accountability lie for failed processes or programs instituted at the USPTO? Indeed, middle- and upper-level management is excellent at not attaching names of persons responsible for creating, promulgating and/or changing new programs, many of which fail along the way, including approaches to examiner case docketing and docket management. Now management has determined it is necessary to re-institute sign-in and sign-out policies, something that was gratefully abolished by Q. Todd Dickinson when he was Director of the USPTO Like most knowledgeable adults, Director Dickinson understood that treating patent examiners like the professional adults they are would bring out the best in them. He was right. It worked! The present leadership at the USPTO seems to believe that micromanagement is the best avenue. One can only wish them luck with an approach that historically has not worked well.
The examiners I’ve known were/are honest, committed and extremely hardworking people who often did/do voluntary overtime to meet production demands. Somehow it seems unfair that each time a reduction in USPTO staff is recommended, it is the “worker bee” patent examiners who find themselves first in the line of fire, and yet who constitute the backbone of the patent examining operation. It would be wise for management to ferret out examiners whose work is poor and those who “game” the system, but without threatening everyone in the examining corps. To do otherwise will be to risk the loss of many good, productive employees.
Each of us who works for a living has deadlines to meet, but I doubt many of us have a biweekly numbers-based production deadline set for Monday afternoons at 3 pm, the successful completion of which often depends upon the cooperation and goodwill of co-workers and practicing attorneys alike. Perhaps reduction in the numbers of employees at the USPTO should begin with levels at the top rather than with examiners. Otherwise, the system will not change for the better.