An Old Patent Examiner Explains Poor Patent Quality

By Gene Quinn
April 17, 2009

I have been writing for some time about the problems with the United States patent system and my proposed solutions.  As I have continued to write about various issues and work through them with assistance from readers who both send me private e-mails and post comments, I have been getting more and more comments and messages from people on the inside of the USPTO.  I have been extremely encouraged to learn that there are many within the USPTO who are as concerned about the problems facing the patent system as I am.  The communications I am receiving are offering substantive ideas and particularly defining the problems encountered on a daily basis by those who work as patent examiners and those who work in the appeals process within the Patent Office.  I am extremely appreciative of the fact that those within the Patent Office are reading IPWatchdog.com, and I am grateful they are interested in trying to make a better patent system.  Please keep your thoughts, e-mails and comments coming.

There have been a few comments lately that deserve more attention than just being left to languish in a long stream of comments.  While the comments are always helpful, I want to make sure these comments do not get lost, and more importantly get properly indexed and findable.  One such comment was made earlier this morning to the article titled Perspective of an Anonymous Patent Examiner.  This comment was made by someone claiming the name “Old Examiner,” and is reproduced below:

As a GS15 examiner with over 30 years experience, I believe there are several reasons for the poor quality of examination currently existing within the Office.

First, the Office has rapidly expanded with a glut of applications in the last decade forcing a ridiculous number of new examiners to be hired. Such a large number necessarily dilutes the talent pool. Further, the newbies aren’t well trained. Prior to reaching their examining group, they spend months in a training academy attempting to learn all facets of the job and being supervised by examiners having no knowledge of their art area. In the past, examiners were placed in their art units after 2 weeks and received hands-on training by experienced examiners or their supervisor who were knowledgeable about their art. Later, they attended classes at regular intervals for further training.

When I started in the Office, supervisors had many years of experience. Currently, you see examiners appointed as supervisors one year after becoming a primary examiner. They barely know how to do the job themselves, let alone train other examiners. They are usually appointed in art areas they are unfamiliar with, hindering their ability to assist the junior examiners in searching and expediting the prosecution.

New examiners are also trained to write short stories on first action, never getting down to the crux of the inventive concept and wasting a great deal of time. The short form of the 1970s worked great, consolidating the issues for either a final rejection or allowance on the next action.

The Office has also failed to keep up with the classification system, breaking down subclasses for easier searching. They have forced examiners to only word search every case. Subclasses have grown so large that it is virtually impossible to comb through an art area.New examiners never learn the art and are never comfortable that they have the best art in the case. The published applications are no longer classified by examiners, causing numerous misclassifications. This causes examiners great trepidation when it comes to issuing a case fearing that Quality Review will bounce it, and they will be rated poorly. The SPEs also fret about QR since it will affect their rating as well. Therefore, examiners continually make new rejections, attorneys file RCEs rather than appeal, prolonging patent prosecution. Hence,the low allowance rate in the Office.

I, for one, don’t believe recent cases, such as KSR v. Teleflex, have forced the extended prosecution. Even before these cases, I always examined and trained with a common sense approach to obviousness. Some combinations are clearly logical, some simply don’t make sense. My allowance rate has always been around 67%.

Since I work at home, I don’t have as much contact with the younger examiners as in the past, but I do believe most examiners who choose to stay in the Office want to become a Primary Examiner, if not for pay than for no other reason that their decisions become their own. I just think that with the push in the Office for “quality”, it has become difficult for the above reasons, causing many talented hires to leave the Office and the remaining ones to flounder in many cases.

I think there is much that can be learned by listening to experienced and retired examiners.  I have heard many stories from retired examiners about how the Office has changed over the years.  My personal believe is that those with the experience of “Old  Examiner” hold the solutions for the future.  They lived through the Reagan years where pendency rose to an unacceptable level, and participated in achieving 18 month pendency by 1989.  I was just told the other day by a friend of mine that Reagan had wanted 18 month pendency much earlier, but officials inside the USPTO explained that it was not practical because you could not hire enough people and properly train them to accomplish the task.  This, of course, takes a leadership that understands patent prosecution and also has the guts to stand up and explain the realities to political leaders who know little or nothing about what a patent is, let alone what solutions the patent system requires. 

I am working with some retired patent examiners and others to work through some thoughts I have and will continue to write on this path in the weeks and months to come.  My goal is to define procedural changes to the way patent applications are examined, moving toward what I will call a collaborative examination where the patent examiner and the patent attorney or agent actually work to identify patentable subject matter and issue patents quickly, or at least in a technologically relevant time frame.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded IPWatchdog.com in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. 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 10 Comments comments.

  1. Andre April 18, 2009 8:44 pm

    Patent quality has nothing to do with examination quality.

  2. Gene Quinn April 18, 2009 8:53 pm

    Andre-

    Would you care to elaborate? What you say seems completely false, and ridiculous on its face, but I am willing to bite. How could you ever come up with that position?

    -Gene

  3. PatNQ April 20, 2009 7:13 am

    Andre:
    Your comment makes no sense. A poorly searched patent application will (the majority) eventually mature into a patent. I am agreed with Gene that a recent explosion of new SPEs has no experience in the examination process. IMO, most of them want to be SPEs because they are ‘tired’ of examination. Furthermore, the QR (old moniker), QAS and TQAS are also a joke. They too are inexperienced examiners and want to be in the ‘managment’ team for the sake of getting out of the grunt work. Again, IMO, the ‘story-like’ Office Action is for the sake of these QAS since so they can match item-by-item from the claims to the art. God forbid if the examiner forgot to match a few minor items… ERROR!!!! (and don’t get me started with the crass way of determining the error rate) Who is fooling whom? Inventors know their applications and the art inside out. Item-by-item matching misses the crux of what is THE invention.

  4. Paul Amrozowicz April 20, 2009 1:14 pm

    As a fomer examiner I am appalled with the examination quality. The rationale behind rejections are rarely explained, and the training on what truly is obvious is sorely lacking. As an example, just last week during an interview with an examiner I pointed out that none of the references he applied disclosed or suggested one of the elements recited in the claims. His response: “KSR says that I don’t have to find every element.” With this level of understanding of KSR, everything is obvious, is it not?

    Is it any surprise there is a backlog in the examining corpse and at the BPAI?

  5. 6 April 20, 2009 1:19 pm

    “New examiners are also trained to write short stories on first action, never getting down to the crux of the inventive concept and wasting a great deal of time. The short form of the 1970s worked great, consolidating the issues for either a final rejection or allowance on the next action.”

    CANNOT OVERSTATE THE IMPORTANCE OF THIS STATEMENT!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!111!!!!!!11111

    There are currently many examiners who I’m buds with who come in and lament about the large OA they’re about to write. I’m all too familiar with that feeling. But now that I’ve switched to a less formal and much more effective format the abandonments are rolling in (attribute this to the recession somewhat, and somewhat the art used, but none the less the OA’s were shorter and easier) and I’m not worried about writing an OA at all, I don’t dread it and sit on my hands not wanting to do it as I see them still doing. The formalistic style of writing is all good and well where it is appropriate (attorney responses perhaps) but OA’s just aren’t the place. My first spe taught me to write very formalistically, and some examiners I know that went directly into her AU from the academy were really hurting because of her required formalistic requirements. I’ve recently heard that she’s loosened up on the folks a good bit so I’m glad.

    “The Office has also failed to keep up with the classification system, breaking down subclasses for easier searching. They have forced examiners to only word search every case. Subclasses have grown so large that it is virtually impossible to comb through an art area.New examiners never learn the art and are never comfortable that they have the best art in the case. The published applications are no longer classified by examiners, causing numerous misclassifications. This causes examiners great trepidation when it comes to issuing a case fearing that Quality Review will bounce it, and they will be rated poorly. The SPEs also fret about QR since it will affect their rating as well. Therefore, examiners continually make new rejections, attorneys file RCEs rather than appeal, prolonging patent prosecution. Hence,the low allowance rate in the Office.”

    Cannot overstate this either. Frakin classification system.

    “Since I work at home, I don’t have as much contact with the younger examiners as in the past, but I do believe most examiners who choose to stay in the Office want to become a Primary Examiner, if not for pay than for no other reason that their decisions become their own. ”

    Yeah, idk, I pretty much already have the decision leeway, so meh it would just be for the pay and ability to sign cases faster.

    “My goal is to define procedural changes to the way patent applications are examined, moving toward what I will call a collaborative examination where the patent examiner and the patent attorney or agent actually work to identify patentable subject matter and issue patents quickly, or at least in a technologically relevant time frame.”

    Always nice. It just doesn’t jive very well with the current examination system. Personally I believe 3 people should go into a room and not come out until either the applicant decides to give up, or allowable subject matter is found and claimed. In the event of an unfortunate demise of one party then only one party comes out and the application is either allowed or rejected depending on whether it was the applicant’s party or the examiner that came out. Maybe the Spe can come along for the examiner’s party to even the odds 🙂 They could put a little place to get food in the room and a bathroom and a couple of desks and a meeting table. Also a weapons rack near the back wall in case negotiations break down 😉

  6. Gene Quinn April 20, 2009 3:24 pm

    Paul-

    Thanks for your comment. These and the so many other stories attorneys and agents have go a long way to explaining why there is a backlog of cases and why the BPAI is swamped.

    Look for a BPAI article later on this week from me. It will be quite interesting I think.

    -Gene

  7. 24yrexaminer April 20, 2009 4:46 pm

    Speaking from “inside”, what the “Old Patent Examiner” writes is so very true! That is exactly how the PTO works from the inside. May I also add that older examiners are despised for knowing their jobs and are never consulted by these new examiners? Or by their supervisors? At meetings, it is hilarious to see all the new examiners huddled together with their young supervisor, and all the older examiners sitting together at one end! Working at home is a blessing..to be away from all the mess.

  8. 6 April 20, 2009 9:53 pm

    “That is exactly how the PTO works from the inside. May I also add that older examiners are despised for knowing their jobs and are never consulted by these new examiners? Or by their supervisors? ”

    Despised? In which patent office do you work? Unless the primaries are just plain a holes then nobody despises them for any reason. Most people I know really like their primaries. I’ve liked most of mine, my current one isn’t my favorite because he opposes some of my procedural habits established awhile back, like first action finals when they don’t get around the same old grounds of rejection (he, and my current spe, go by the “policy” that if the applicant amends at all then we spare them the wrath, supposedly it’s the TC policy, and I do hear about it being in other AU’s, but it wasn’t in either AU I was in before now and the MPEP is QUITE CLEAR on the subject). Still I don’t despise him.

    Oh, and some primaries being, to be generous, social misfits, doesn’t help matters. Idk what meetings you go to, but they aren’t the same ones as me, though to be sure, people do sit around people they know. C’est la vie.

  9. Gene Quinn April 21, 2009 10:05 am

    6-

    The stories you tell about the Office and the stories every other examiner I know tell are so different I wonder what Patent Office you work for? Are you really an examiner?

  10. 6 April 21, 2009 4:13 pm

    “6-

    The stories you tell about the Office and the stories every other examiner I know tell are so different I wonder what Patent Office you work for? Are you really an examiner?”

    The USPTO and yes.

    Gene, this might surprise you, but the PO is a pretty big place filled with diverse people with diverse points of view and diverse skill sets. It is in fact almost as big as my hometown. There are certainly different ways of viewing the same thing. But for the most part I don’t think my stories are all that different than those you hear from others. For example the examiners huddled around the young supervisor while the oldy olds are all on the other end. I see a group of similar people that likely all know one another sitting together on either end of the table. He sees the same thing with the addition of some bizarro world seperation of the two groups. Which do you think is most likely occuring?

    You probably feel like you hear a lot of people who have trouble allowing things. This is a rather large “problem”. A friend of mine sometimes has this trouble. And by that I mean he has a lot more trouble than me. What the experienced eye will quickly see if it observes both my interactions with my spe, and his interactions with his is that I have gained the trust of the signatory authority where he has not. My old primary first put me on to this understanding of the situation. If you want to be able to allow things easily then you have to establish a good, trusting relationship with your spe. There are various ways to do this. Probably the best involves 1. knowing when a claim you’re looking at is ridiculously overbroad and has art that you should have found by now. 2. when 1 occurs you come to the primary/spe for advice as to where and how to search, often this leads to success in finding the art. 3. when 2 occurs and you still find nothing you explain the situation clearly and display a mastery of the topic at hand that surpasses the spe’s because you just got through scouring the art and understand it pretty well. and 4. repeat 1-3 until your spe trusts that you did this even in cases where he hasn’t demanded that you do it or display having done it, but always be ready to display having done it if demanded. This is hard work, and you’re going to need to be smart, and you need to be able to display both. Most people here are smart, so it’s the hard work part that’s up to them, as well as the display of both.

    I should note that in order to display a mastery you have to have sufficient search skills to find the art relevant to the app. And I don’t mean art that’s 100 miles from the app, or even 10 miles or 1 mile from the app. You need to find art that is about 1 inch from the app. Then be ready to explain why that 1 inch is important and distinguishes. You can also submit some close things that you’ve found that would fill the gap, but don’t for x y and z reason. To this end, I have found searching NPL is very very helpful, and I search it with google usually. After you go over all this wallah, your case is allowed and your trust level just went up. Do this a few times and you’re on your way to just walking in the spe’s office, explaining the case, explaining the closest prior art and him saying, alright, looks good, and 101, 112 etc issues? You say no, and ask if they see any that jump out of the page at them, and they say alright write it up. The worst part about the whole system is being transfered to a new AU. That’s when you’ll start the trust thing all over again, though, if you know how to gain their trust it comes pretty quick.

    Also, I should add, displaying an interest in the caselaw, and displaying a mastery of such things as 101, 112 1st, 112 2nd and the various other issues that plague the profession are all very helpful in showing that your’e really getting into the job and are becoming a trusted assistant examiner. It should be mandatory that we read some caselaw every week or two for an hour or so, maybe designated cases by the TC, it would help examination from all areas so much, and save people time and trouble.

    I’ve explained all this at various times, but invariably you’ll see some new examiner come on the board and be having such a hard time allowing stuff and thinking that hey, he’s done a search, he doesn’t have anything, so his job is done! Well, in the academy that’s your lot in life, sorry, make do and make the cut. But when you get to the TC the above is what you need to do.

    The bottom line is, you hear stories Gene, but there is always at least two sides to that same story.

    I should also add that allowing things is about to get a lot easier. Budget n all.. Incoming horrible issued claim barrage for the litigation teams to sort out.