My 2010 wishes for the U.S. Patent Examiner

By Ron Katznelson, Ph.D.
January 8, 2010

EDITORIAL NOTE: What follows is a portion of a longer essay by Ron Katznelson, which contains more information including statistical data on the work of the U.S. Patent Office. It is published first here as an article with the permission of Dr. Katznelson.


When asked what wishes pertaining to patents I have for the New Year, I began thinking about the large number of problem areas for which I wish fundamental change, improvements and solutions. The problem list grew longer but all have a single common underlying cause. All of the problems would likely not have developed had the U.S. patent office been functional and timely in granting quality patents. For the most part, past actual and perceived USPTO dysfunction stem from long-term failure to invest in our Nation’s patent examiner corps. This is the reason that for this New Year, I make my wishes for the USPTO Patent Examiner.

I wish that 2010 became the year during which we have a new and different conversation on the role, status and skill level we should expect from USPTO examiners. I wish that this conversation would lead to the national realization that we have severely under-funded, under- resourced and under appreciated the role and status of the patent examiner profession. Although the implications of my wish may appear radical and expensive to some, I believe the conversation should focus on three fundamental elements. The first is the recognition that proper examination of patent applications for inventions in leading areas of technology requires professional knowledge and expertise in the art comparable to, if not exceeding, that of inventors in the field. The second is the recognition that basic changes in examiners’ working conditions, production goals and incentives are required to ensure that examiners have adequate time for examination and for acquiring technical knowledge, and that they are easier to recruit and retain. The third component is the proper alignment of examiner quality measures and incentives with the societal costs of patent examination errors. In addressing these issues, I cite historical facts and policy practices of previous USPTO administrations in order to highlight what I believe to have been mistakes that should have been avoided, and I wish would be avoided in the future.

(1) Examiners as knowledgeable scientific and technical professionals

Patent applicants respect their examiners. I believe that examiners should be able to earn our elevated respect and recognition as peers. When prosecuting my patent application, I expect an examiner who is well versed with the latest developments in my field and one who comprehends the problems my invention solves. A way to achieve this goal is to attract top technical experts to become patent examiners, an area in which the USPTO has had limited success. In order to develop and retain the expertise in the examining corps, it is essential to provide examiners with more time to specialize in their fields, the same way that their peers do: reading the technical literature, participating in conferences and attending technical trade shows. In my view, the examining corps expertise should rest on two “pillars:” examiners should first be scientists, engineers or technical experts in their art area, and second be specialists in patent examination procedures. While many examiners currently fit both of these “pillars,” the USPTO today lacks the resources to ensure and foster the former. U.S. patent examiners’ expertise, proficiency and professionalism should be regarded as a national asset worthy of investment to no lesser degree than recent national infrastructure investments under the stimulus package, as I elaborate below.

(2) Examiners’ workload and production goals

I wish that in 2010 the USPTO would commence a thorough review and conduct serious statistical performance studies and measurements in order to design a better examiner production-goal system. The following historical facts are worth mentioning. Recent USPTO annual reports and GAO studies attribute the current examiner production goal system to a 1976 agreement with the Examiners’ Union. The goals were set after a “study” that apparently had been kept unpublished. However, the 1976 USPTO Annual Report mentions that the ’76 production goal system had provided for a 6% increase in the average time for a disposal, setting the corps’ new average goal at 19.5 GS-12 equivalent hours. I could find no evidence that the workgroup quotas set then were based on any measurements or objective performance facts. These objective performance facts might be examination error rates under different time allotments, choosing the shortest periods that yield acceptable examination error rates.

As discussed below, the USPTO’s own measure of examination errors is one-sided, as it reports final allowance error rates but does not report final rejection error rates. Nevertheless, even by this allowance-error measure alone, the fundamental deficiencies of the Office’s production goals appear evident. This is shown in the figure above, where the average allowance error rate for each workgroup is plotted against the average allotted time per production unit (PU) in the respective workgroup. While not conclusive, these results are particularly suggestive: the broken trend line shows a definite indication that, on average, the examiner goal system fails to provide the minimum baseline time required in many workgroups regardless of technology. These results suggest a closer review of the goals set for workgroups in these low allotted-time categories. The conclusion is clear: examiners do meet their goals – but at the expense of quality.

(3) Alignment of examiner quality measures and incentives with the societal costs of patent examination errors

Societal costs of examination errors comprise of costs to applicants, to the Patent Office, to third parties and society as a whole. Erroneously allowing applications that do not meet the statutory patentability requirements or erroneously rejecting meritorious patent applications are both harmful to society.

Examiner rejection errors

(a) deny inventors their constitutionally directed statutory rights to their inventions;
(b) deny society the benefit of private investments in, and development of, otherwise patentable innovations; and
(c) deny society the benefit of disclosure and teaching of new knowledge and discoveries, thereby slowing innovation.
Examiner allowance errors adversely affect third parties subject to erroneously issued claims by
(a) inflicting unwarranted legal costs; and
(b) deterring downstream innovation that are erroneously deemed infringing.

There appears to be no shortage of scholarship and literature focused solely on the societal costs of examiner allowance errors. However, there is a glaring paucity of such sources on the societal harm of erroneous rejection of meritorious applications for patentable inventions. Furthermore, I am unaware of any quantitative assessments of the relative costs of these two types of errors so that a balance between the two can be considered.

In an upcoming paper, I prove the proposition that societal costs for making patent examination rejection errors are higher than the societal costs for making allowance errors. The proof of this proposition relies on the same societal cost-benefit analyses that lead many nations who had not found resources to institute a patent examination system to adopt instead a patent registration system, rather than abolish patents altogether.

The USPTO’s apparent presumption that allowance errors are far more important to control than rejection errors is contrary to fundamental economic principles of the patent system. The Office must augment its quality measures to include a second final action measure: Final Rejection Error Rate. Examiners’ incentive and supervisory programs should weigh this second metric with no lesser weight than that accorded allowance error metrics.

Director Kappos articulated what should have been the Office’s policy before his arrival: “Patent quality does not equal rejection.” The Office has recently started to move away from the excessive weight on allowance errors. This is a welcome move in the right direction, coming from a leader who had experienced in his prior position the draconian effects of previous USPTO policies. It is not enough, however, to merely attenuate examiner costs for making rejection errors. The Office should pursue a balance in weighing these errors with rejection errors. Thus, it is my hope that the recent changes would be followed by a fresh review of the Office’s quality programs, and that measures of final rejection error rates would be instituted and that the Office will use them to balance its examiner incentive and performance appraisal system.

(4) Conclusion

My observations and recommendations above are all about empowering U.S. patent examiners by investing more resources in their operations and by allotting more time for professional development. Management is working hard on increasing the ranks of the corps. Actions should also facilitate examiner’s quality work by balancing their incentives. Growing patent backlog damage had been done over the last decade and the Office’s new management cannot be expected to fix it overnight. The overarching and laudable goal of reducing pendency should not translate into extreme diversion of USPTO resources narrowly for the sake of reducing pendency, regardless of collateral outcome adverse to the examiner corps. It will take years to rebuild the corps and overcome the backlog harm. My 2010 wish for the U.S. Patent Examiner is that we start this year.

The Author

Ron Katznelson, Ph.D.

Ron Katznelson, Ph.D.  
Dr. Katznelson is the Founder and President of Bi-Level Technologies in Encinitas, CA. He is also the Chairman of the Intellectual Property Committee of the IEEE-USA. This article expresses his personal views only and does not represent any position taken under his official capacity at IEEE. From 1990 to 2005, Ron was Chief Technology Officer, Founder and Chairman of Broadband Innovations, (formerly known as MCSI), where he led the company’s entry into the digital RF CATV industry. Prior to that, he was with the VideoCipher Division of M/A-COM Linkabit Corp., later acquired by General Instrument Corp. (GIC), where he served as Director, New Technology Development. At GIC, he directed R&D in the areas of Advanced Television Systems that led to GIC's video compression technology, now forming the core of the MPEG-2 standard and a basis for the Grand- Alliance ATSC High Definition Television standard. His responsibilities also included the management and development of the VideoCipher Division's intellectual property portfolio as well as representation in industry groups and standard bodies.

Prior to his work in industry, Dr. Katznelson was a Professor of Electrical Engineering at the University of California, San Diego (UCSD). He taught courses in Linear System Analysis, Probability and Stochastic Processes.

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 17 Comments comments.

  1. Blind Dogma January 9, 2010 10:24 am

    “examiners do meet their goals – but at the expense of quality.”

    Reminds me of the old adage – you get what you measure. Combine that with rather befuddling definitions of “quality” by the Office and you obtain the obvious results of the Office proclaiming perfect or near perfect quality results as the ship sinks.

    No real surprise.

  2. Mark Nowotarski January 9, 2010 11:52 am

    Ron,
    I was wondering if you might have a few wishes for the patent bar as well as the examiner corps?

  3. Ron Katznelson January 9, 2010 3:53 pm

    Mark,
    Happy New-Year. Of course I have wishes for members of the patent bar. The most important one is that my 2010 Wishes for the U.S. Patent Examiner would come true. Read all about those at http://bit.ly/RDK-2010-wishes .

  4. Mark Nowotarski January 9, 2010 6:04 pm

    Wow! Very comprehensive.

    I was intrigued by the graph showing the growth in number of subclasses versus time. I wonder if that has anything important to say about the nature of our cleint’s innovative activity.

  5. Ron Katznelson January 9, 2010 8:17 pm

    Mark,
    No, I do not think the decline in new subclasses establishment rate has much to do with your client’s innovative activity. I suspect the drivers for the creation of new subclasses have not changed, given the growing flow of original applications disclosing new matter and new inventions (exponentially doubling about every 14 years since the late ‘70’s). Rather, the number of new established subclasses is dependent on class bifurcation decisions made by the Office, and its ability to classify new patents and, more laboriously, reclassify older patents in such new subclasses. This is tedious but important work of USPTO experts in their field. The option of avoiding bifurcation is always available to the Office, with the result of gradually increasing the breadth of subject matter classified under the same subclass. When the classification resources of the Office are shrinking in comparison to the increase filings, the outcome shown in Figure 1 is not surprising. For a simple comparison, note that about 10% of the USPTO’s patent examining staff was employed at the Office of Patent Classification during the late 1960’s. Today this fraction would correspond to about 600. I am not saying that we need so many today. However, I suspect that the relatively very small number we have today has contributed to the erosion of prior art search quality, as I discuss in my Essay.

  6. Current Examiner January 9, 2010 10:48 pm

    Your wishes all sound completely justified…if the examiner was given 2 weeks per case.

  7. A. Rebentisch January 10, 2010 6:06 am

    (a) deny inventors their constitutionally directed statutory rights to their inventions;

    As far as I know the US constitution grants the Federal level the competence to grant patents, the permission to enact a patent law. It does not grant the citizens a constitutional right to get a patent. It also does not oblige the United States to have a patent law.

  8. Mark Nowotarski January 10, 2010 6:47 am

    Ron,

    Is there any way to find out what new subclasses are added each year?

  9. Mark Nowotarski January 10, 2010 7:04 am

    To the audience in general, if a patent is classified into multiple classes/subclasses, what does that say about “the” art of “the” invention?

  10. Noise above Law January 10, 2010 10:11 am

    @ A. Rebentisch:

    You are correct that “the Constitution does not oblige the United States to have a patent law”. However, your leap to “It does not grant the citizens a constitutional right to get a patent.” cannot be maintained, as the Law that mandates that those citizens that apply and meet the rules SHALL be granted a patent directly flows from the Constitutional Power. While most laws can be traced back to their power source with different lengths of “chain of title”, patent law is one of the most direct.

    Think about this: Your dislike of patents would drive you to flout the Law. Many people dislike many other aspects of Law (Tax law immediately comes to mind). With your logic, any and all Law that one does not like should be nullified. Would the use of your logic leave any semblance of government?

    @ Mark Nowotarski,
    Mark, to mix apples and oranges to a slight degree, what do you think of KSR’s augmentation of PHOSITA’s powers to cross (and know omnisciently) any number of art areas whenever “the solution” can be found in ANY art area at all, where the only motivation to combine can be hindsightedly provided that the other art idea works regardless of any existent stated teaching?

  11. Mark Nowotarski January 10, 2010 11:36 am

    @noiseabovethelaw

    “what do you think of KSR’s augmentation of PHOSITA’s powers to cross (and know omnisciently) any number of art areas whenever “the solution” can be found in ANY art area at all, where the only motivation to combine can be hindsightedly provided that the other art idea works regardless of any existent stated teaching?”

    At the time, like many practitioners, I found this very disturbing. Since then, I have found that it has increased the importance of interviewing a case, especially in person. That seems to be the best way to understand how an examiner (and his/her primary) are applying KSR and for them to understand exactly where the nonobviousness of an invention resides. We are then in a much better position to craft effective and allowable claim language.

    How about yourself?

  12. Gene Quinn January 10, 2010 11:51 am

    A. Rebentisch says: “the US constitution grants the Federal level the competence to grant patents… It also does not oblige the United States to have a patent law.”

    The US Constitution does not mandate the existence of patents, but the founding fathers thought it to be so fundamentally important to have patents that the third Act of Congress was the codification of patent laws. Thomas Jefferson was the first patent examiner, and numerous of the founding fathers recognized the need for a patent system, which existed at the time the country was founded. They just wanted the patent system to foster innovation rather than have patents given to friends of the king.

    Having said this, lets be perfectly clear. Today the Congress doesn’t have the “competence” to do much of anything. Deciding important issues of innovation policy and patent law is only one of many areas where Congress does not have competence.

    -Gene

  13. Mark Nowotarski January 10, 2010 2:48 pm

    @gene quinn

    “Congress doesn’t have the “competence” to do much of anything.”

    Gene, I respectfully disagree. The competence of a Representative or Senator resides in one or more aides assigned to a given area. I have found the aides of both of my Senators and Representative very receptive to meeting with constituents and accepting constructive and instructive input, particularly in the area of patents.

  14. Examiner2 January 14, 2010 8:23 pm

    Ron,

    As an examiner, I thank you for your thoughts and wishes. They are my wishes too. It is true that we would need much more time per case and “time off” for reading journals or attending conferences, but I have to believe that inventors (and their representatives) would much rather wait longer to receive a well-thought-out Office Action than to get the hurried work that I’m churning out now. Perhaps the first Office Action would take longer, but I don’t believe that disposal would be that much longer and I think all parties would be more satisfied with the outcome when it did happen. If I’m wrong, fine, but whatever the case, dramatic change is needed. Director Kappos has made a great start, but as it is, I don’t think I’ll be at the PTO much longer. I’m continuously dissatisfied with my own work because of the lack of time, I don’t feel I have as much technical competence in my art as I should and the continual stress is taking its toll.

    Someone asked about a patent being classified into multiple classes/subclasses. I see this all of the time and expect it to become more common. Putting aside the fact that the classification system is a mess, technology is becoming ever more interdisciplinary. Ever looked at all of the stuff in class 257 (solid state devices)? There are a lot of things in other classes that overlap with that now. We’ll see how it goes…

  15. Gene Quinn January 14, 2010 10:38 pm

    Examiner2-

    Thanks for contributing to the debate.

    Do you have a sense about how many other examiners share your feelings about being dissatisfied with the quality of your work because you don’t have enough time to feel good about what you are producing? How many others are stressed out like this?

    While I don’t know you, the fact that you care enough to be stressed out and unhappy with rushed quality suggests you are the type of examiner we need at the Patent Office.

    -Gene

  16. Ron Katznelson January 15, 2010 1:18 am

    Examiner 2:

    I agree with Gene. The reason I wrote my Essay (the full version of which is available at http://j.mp/RDK-2010-wishes) is to amplify important examiner voices such as yours, by using facts and figures. Your point about applicants’ preference for receiving a later but well-thought-out Office Action than to get hurried work is well taken. In and of themselves, robust and well-researched First Actions will mitigate much of the current harm caused by long total pendencies, well before the Office is likely to reduce its total pendency periods. This is because both prospective patentees and the public (through PAIR) will receive EARLY and more RELIABLE information on substantive patentability matters, with subsequent amended claims that are closer to the ultimately-issued claims. The public notice function of the patent system will be advanced and the average number of examiner actions per disposal will be reduced. According to the Office, that number as of early 2009 stood at 2.91, up from 2.26 in 2003. I expect that this trend had already started to reverse.

    You say “Director Kappos has made a great start, but as it is, I don’t think I’ll be at the PTO much longer.”

    I am truly disappointed to hear that you have concluded that your departure is imminent based on the situation “as it is” presently instead of basing your decision on that likely to be in the future. Director Kappos’ initial policies appear pinpointed in directions that can bring the most “bang for the short-term buck” with substantial improvements in the areas I discuss above. Facilitating specific time for examiner interviews before First Action and adding additional time per case, are very important decisive initiatives along the lines you advocated. I doubt that he will stop at these initiatives and I hope to see my Essay wishes fulfilled. However, it takes time and resources to change the situation “as it is”. The Director is hamstrung by congress’ misapprehension of the Office’s needs and I have to admit that the latest vote by the US Senate to leave the PTO underfunded for 2010 is extremely troubling (see http://www.ipwatchdog.com/2009/12/15/us-senate-votes-to-leave-patent-office-underfunded-for-2010/id=7767/). What is missing is not fee-setting authority for the Director (Congress will still divert whatever higher fees are collected), but rather Congress’ basic understanding of the important functions the PTO fulfils, how it operates, and its impact on the economy. As I show in my Essay, the previous PTO management repeatedly failed in conveying the gravity of the required resources because it failed to understand and project its own needs.

    I would hope that you withhold your departure decision for a little while, until new initiatives are put in place, more information develops, and the new management has had an opportunity to properly educate Congress.

  17. Examiner2 January 15, 2010 12:28 pm

    Gene,
    I wish I could give you a sense of how many examiners feel as I do, but that’s a difficult thing to ascertain for a number of reasons. My corner of the PTO is pretty quiet and people tend to stay in their offices. Any interaction we have is usually quick and about a specific case. Maybe it’s different on other floors or in other buildings, but I can’t say I know what everyone is really thinking. There’s not much “water cooler” discussion, if you know what I mean.

    Ron,
    I am trying to hang in there for change. I really think that what Director Kappos has already achieved in his short time here is nothing short of miraculous in a large bureaucracy like the PTO (with a union, nonetheless). The latest rumor is that the new count system will finally be implemented at the end of the month and that should help quite a bit. I’m trying to take it one day at a time, but that’s never been easy for me (I’m working on it). Thank you for fighting the good fight.