Review of USPTO should start at the top, not with examiners

By Sue D. Nym
May 9, 2017

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.

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USPTOIn 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(the latter leading to examiners training their supervisors, errors incorrectly charged to examiners that were rescinded and occasionally second, “no count” Office actions issued).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.
    1. 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.

Thank you.

The Author

Sue D. Nym

Sue D. Nym  

As you have probably guessed, Sue D. Nym is not a real person. Occasionally we receive an article and the author wishes to remain anonymous. All such anonymous posts, whether contributed by a man or a woman, are attributed to Ms. Nym.

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 8 Comments comments.

  1. Shannon Zhang May 10, 2017 9:33 am

    Thank you, Sue D. Nym. I also believe culling at the USPTO must start at the top. Examiners are not without their faults, but there appear to be fewer examiners than the combined number of other “staff” plus contractors.

    I often talk with examiners who work in the chemical arts and have heard similar stories to those you expressed. I was told that examiners were deliberately not assigned to their area of expertise because they would find everything to be obvious. It had a ring of truth to me because the chemical areas staffed by PhDs allow far less than others, at least in my experience.

  2. Anon May 10, 2017 10:21 am

    I find it somewhat odd to think that the “chemical arts” would be purposefully not examining to the full rigor of 103.

    Is not one of the common “views” regarding those arts and 103 concerned with the “lack of predictability?”

    If that view is merely one of an artiface culled (at least in part) with the use of less-than-knowledgeable examiners – thereby perpetuating the “gee-this-looks-like-magic-and-not-simple-processing-to-an-actual-PHOSITA” view, I have to wonder if this is a deliberate tactic to avoid antagonizing a “more traditional” sector of patent activity, which might then “join forces” with the software and business method folks…

    “Divide and conquer” is not a novel concept…

  3. Benny May 10, 2017 10:29 am

    Anon, quote –
    ” “gee-this-looks-like-magic-and-not-simple-processing-to-an-actual-PHOSITA”
    Now, where have I seen that attitude before ?
    Ah yes. ALL THE TIME at the good ol’ USPTO, where mechanical engineering graduates get to examine applications in the electronic arts.

  4. Gene Quinn May 10, 2017 10:36 am

    Anon-

    Your comment raises a lot of thoughts.

    1. I do think the Office has a problem with respect to application of the wrong standard for obviousness. I have mentioned it in passing several times with respect to the PTAB. They hired so many PhDs of extraordinary skill in the art I wonder whether they are capable of applying the ordinary skill in the art standard. It is old data, but at one point PTAB judges were more than twice as likely to invalidate for obviousness as a district court judge. Presumption and evidentiary standard may play a role. Not sure how you could prove the theory.

    2. The Office has long had uneven application of obviousness. If you are giving an inventor of a computer implemented method an opinion you have to start with the presumption that there is nothing that can be patentable and even if it were patentable everything would be obvious. So unpatentable until proven otherwise. If you are giving an inventor of a kitchen gadget or something you might see on QVC an opinion the thresholds are very different. Even things that seem exceptionally obvious will pass muster.

    3. I don’t know enough about chemistry to opinion about whether that industry is getting favored treatment one way or another. I know the pharma/biotech lobby is powerful, but so much of what they do is so highly speculative and unpredictable. I personally think there are other explanations, but I can’t go through those cases and identify mistakes.

    -Gene

  5. Anon May 10, 2017 9:08 pm

    Benny,

    This is the very first that you have ever raised that concern (along with the fact that you lack the “inside scoop” that is purportedly here).

    If in fact the Office is doing this in other art fields, then the alarm equally applies – and notably, and probably much to your chagrin – is STILL not an indictment against those art fields.

  6. CP in DC May 11, 2017 1:54 pm

    I think the count system must be radically changed, if not abolished. The author mentions the count system on two occasions. It was a system instituted decades ago and has outlive its use. Most examiners simply focus on counts above all else. This is evident in the office actions we receive that are a copy and paste job from the previous rejection (or related applications, yes examiner’s issue the same rejection in the patent family using the same references).
    I work in the life science fields pharma and biotech. Ph.D. or not, the examiners only care about counts and the work reflects this.

    To answer a prior post, obviousness is the most common rejection we get from the PTO. Somehow, all the individual ingredients can be found and “it would have been obvious” to combine them. After KSR, hindsight is back with a vengeance and everything is predictable unless you can prove otherwise.
    Form this article, I can see that there are persons at the PTO that want reform, I know that as a practitioner, I also want reform. Reform management, but don’t stop there.

  7. Anon May 11, 2017 2:39 pm

    Gene, I am glad that my comment provides some mental fodder.

    After reflecting on your comments, Let me respond in kind with the thoughts that your comments stirred:

    1. The standard of obviousness has never been set by Congress, and if one understands how obviousness came about to replace a wayward Court using the power of common law evolution to set the meaning of the term “invention,” a colorable argument could be made that the standard was not meant to be set by the Court.

    Notwithstanding that historical perspective, the Court has set “the standard” in the Graham case. While I am sure that you are well aware of the Graham factors, for the average reader, let me provide them:

    A. Determining the scope and contents of the prior art.

    B. Ascertaining the differences between the prior art and the claims at issue.

    C. Resolving the level of ordinary skill in the pertinent art.

    D. Considering objective evidence present in the application indicating obviousness or nonobviousness.

    Far too often NONE of these factual inquiries are undertaken, and even IF undertaken at a cursory level, they are not made explicit as required. I find it routinely disappointing how badly the Office (in any number of art fields) adheres to the standard as enunciated in the Graham case, and have had sizable difficulties in making the Office follow the Graham factors appropriately, even as I patiently and respectfully guide the examiners in how to do so.

    One way to help prove (or disprove) “the theory” is to force examination to put on the record the precise resolution of the level of ordinary skill in the pertinent art. Once an examiner puts this on the record, then the applicant has a chance – during prosecution – to challenge or “set the facts straight.”

    2. Application of the requirements being uneven becomes MORE problematic when the unevenness is purposefully chosen.

    Such was the gist of my comment concerning the case if the Office was indeed targeting the chemical arts.

    As to the application being uneven in the computerized machine arts, a comment by Ternary at

    http://www.ipwatchdog.com/2017/05/11/recent-federal-circuit-decisions-do-not-change-need-action-alice/

    hits the nail on the head in that no one would have dreamed calling the initial machines “abstract” and it is only through the fire-hosing brought on by a Court that refuses to not mash the wax nose of 101 that we have such a rampant problem.

    3. I am not fond of the “so highly speculative” mulligan that you seem to want to apply to the pharma/biotech arts. I recognize this to be more own personal view.

    Such a consideration has nothing to do with whether or not the parameters of the law are set, and I just do not see the mulligan properly resting in any of the Graham factors.

    I am perfectly fine with the fact that it may be more difficult to invent in some arts than it is in others, but “speculation” to me only indicates a lack of actually having an invention in the first place.

    I am just not moved by the pleas of “but human trials cost so much.” I truly believe that the cost persists exactly because market forces that would drive reductions in cost are shielded by laws which excuse the cost and in fact build in that cost. Take the mulligan away and you may very well see innovative efforts to make inventions in that art field in far more cost-effective manners (innovation may well be driven to innovate cost effectively).

  8. Justan Opinion June 6, 2017 5:15 pm

    Nothing at all is being targeted except perhaps as consequence of other policies. You give management far too much credit.

    The level of education w.r.t. to the state of the art is definitely a factor in the application of 103. An illuminating conversation would set most of these people on the right path; many examiners see themselves in a sort of arbiter role, protective over this scope or that feature, when in fact it is their job to assist the public in gaining protection over their economic activites.

    You’d think those guys that find everything obvious would be smart enough to realize that obviousness is kiiiiinda precluded entirely if you have to spend more than a page of Graham analysis to put the claim together. The prior art either says it or not – inventors deserve their day in court otherwise.