Patent Office Proposes Changes to Examiner Quota System

David Kappos, the Director of the United States Patent and Trademark Office, unveiled yesterday a series of proposals to bring significant change to the examiner “count system” – the methodology for determining the time a patent examiner has to complete a patent examination and how much credit is given for each stage of an examination. In the past I have referred to this as the examiner quota, and like so many others have been begging the Patent Office to make changes and address this matter so that it would be unnecessary, or less necessary, for examiners to manipulate the system and require needless filings (typically RCEs) by applicants and their representatives. The count system was created in the mid-1960s and hasn’t been revised since 1976, and with an ever deepening sophistication of inventions it has been woefully outdated for many years. While I have seemed to rail against patent examiners for manipulating the system, it is hard to place the blame on them for doing what virtually any of us probably would have done. Examiners have been over worked, and responded in ways that allowed them to get the credit they deserved for the work they were performing. Hopefully more realistic work requirements will streamline the process by giving examiners more time and putting an end to needless additional filings that only drag out the entire process to the detriment of the applicant and industry.

The proposed changes to the count system were developed by a task force comprised of senior managers in the Patents organization and leadership of the Patent Office Professional Association (POPA), the union that represents patent examiners. The proposed changes would be the most significant changes to the count system in more than 30 years. Based on the information on the USPTO website it does not appear as if the proposed changes are in a formal written form. Specifically, the last slide of the PDF that sets forth the changes explains that the next step is to finalize the package, distribute the draft agreement, hold briefings of interested parties beginning in early October (and including the IP community) and hold a ratification vote.

According to the press release issued by the USPTO, the proposed changes are designed to:

• Set the foundation for long-term pendency improvements.
• Increase customer satisfaction by incentivizing quality work at the beginning of the examination process.
• Encourage examiners to identify allowable subject matter earlier in the examination process.
• Rebalance incentives both internally and externally to decrease rework.
• Increase examiner morale and reduce attrition.

Similarly, according to the same press release, the proposal addresses the following areas of change:

• Improved working conditions: While the proposal increases the time examiners have overall, it provides incentives to encourage examiners to do a high-quality first action, and shifts resources from a focus on examiner recertification to front-end quality improvements. This change in incentives will ultimately encourage examiners to dispose of applications more quickly.
• More time for examiners: The proposed changes will give examiners more time overall, more time for a first action on the merits, and time for examiner-initiated interviews, while decreasing credits on requests for continued examination (RCEs)* and providing consistent credits for transferred or inherited amendments.
• Process changes: These changes will increase work credit certainty for examiners, increase fairness to applicants, and balance the load on IT systems.

Here is what various Patent Office managers are saying:

David Kappos:

“Secretary Locke directed us to adopt an ambitious agenda to address the significant challenges at USPTO and that’s what we’re doing. We’ve worked closely with labor representatives to propose a long-overdue transformation of the count system. We hope to move expeditiously toward adoption of these changes that will benefit examiners, the agency and the IP community as a whole.”

Deputy Commissioner for Patents Peggy Focarino:

“These proposed changes will lead to earlier identification of patentable subject matter, which will benefit both the USPTO and applicants. Over the long term, we believe these changes will promote quality examination and set a foundation for pendency improvements.”

POPA President Robert Budens:

“The count system is sorely in need of re-tooling and we feel this proposal is a necessary first step toward giving examiners the time they need to do a quality examination. We are pleased to have been involved in developing this proposal and we are hopeful it is one that our members will support.”

The task force expects the improvements in overall efficiency caused by getting to examination more quickly will offset the increased time provided for examination. And, importantly, they expect improved quality by providing examiners with more time up front in the first office action to do a thorough search and examination. The task force is prepared to propose adjustments as warranted should the changes not yield the anticipated results.

This proposal is intended to be part of an iterative process of improvements to the count system. The task force will measure the effects of these changes and gather internal and public feedback, and will meet on a regular basis to monitor progress and consider additional changes.