One of the top agenda items when David Kappos took over as the new Director of the United States Patent and Trademark Office was to revise the examiner count system, something that everyone in the industry knew needed to be done. The now old count system was leading to gaming of the system (by some) and providing incentives in the wrong places. On September 30, 2009, the USPTO announced that significant changes to the examiner count system had been collectively agreed to by management and the union. These changes took effect last week and could usher in a new era of incentives that lead to patent examiners having the appropriate incentive to issue patents when there is deemed to be at least some allowable subject matter presented in a patent application. According to Director Kappos, the USPTO is “confident the new count system will encourage quicker resolution of issues and lead to more efficient examination of patent applications.”
As industry insiders know, the count system is the methodology for determining the amount of time in which a patent examiner is expected to complete a patent examination and the credit that is given for each stage of an examination. The changes were the result of negotiations between the Patent Office Professional Association (POPA), the union that represents patent examiners, and USPTO management. The new count system seems to place emphasis on complete and thorough initial examination, and even provides incentive for examiners to issue patent applications early in the process. Examiners are also given up to 1 hour of non-examination time to initiate an interview with the applicant or the applicant’s representative, and to write up an interview summary. Given that patent examiners will receive more credit under the new count system for disposals without need for a Final Rejection, it seems reasonable to anticipate that when there is allowable subject matter present in an application at least some examiners will find it in their own best interest to work with an applicant to get a patent issued quickly. Time will tell, but it does seem that an appropriate balance has been struck.
The image below is taken from the power point presentation put together to explain the September 30, 2009 agreement internally to the patent examining corps. What is labeled “Current” is now the old count system, and what is labeled “Proposed” is what went into effect last week.
As you can see, patent examiners will face diminishing returns by continuing to force unnecessary RCE filings. It is also worth noting that after a First Action on the Merits the patent examiner can achieve the .75 disposal credit without issuing a Final Rejection, which would seem most likely to occur when there is a patent issued. Thus, it seems to me at least looking at the count system on paper that it is fair to say that this agreement seeks to put the emphasis back on granting patents and away from the reject, reject, reject mentality that took hold in the office post second-pair of eyes review.
The USPTO being back in the business of granting patents seems to be bolstered by the attempts to remove what I will call the patentability penalty (see image below). As we all know, rightly or wrongly, there has been a perception by many patent examiners over the 2005-2009 time frame (at least) that the Patent Office was defining quality with respect to whether patents issued that should have been denied, not caring about whether patents that should have issued were finally rejected and forced to be abandoned or file unnecessary RCEs. From what I understand, it is not 100% correct to say the USPTO was not concerned about bad final rejections, but the clear and perhaps overwhelming emphasis was placed on patents that issued, not patents that were finally rejected. This gave rise to a culture of self preservation, which found many patent examiners simply rejecting anything and everything. Now, however, a single negative patentability determination cannot be used against an examiner, so perhaps at least some patent examiners will see this along with the count system modifications as ample reason to issue more patents.
As with any new initiative there are great hopes, but the reality is that the proof will be in the result. So while the implementation of a new count system leads to a great deal of optimism, the truth is that policies and procedures on paper mean nothing if they are not implemented. I have no doubt that the USPTO management believes this will be extremely positive, so now it is up to the patent examining corps directly, and indirectly (at least initially) to management to make sure that the policies and procedures will be implemented. I have heard some hearsay about some examiners still having no intention on issuing patents, so we will just have to see. I am optimistic and have seen the beginnings in a culture shift over the last 10 months or so.
In order to gauge the impact and effectiveness of these changes, the USPTO has launched an online Feedback Channel, which will give the public an opportunity to provide input on the new count system directly to agency officials. So if you see problems with the count system as it is being applied, including potential gaming of the system, let the USPTO know.
The Feedback Channel also enables the public to comment on two other recently launched initiatives. There is a dedicated channel for comments on the “Project Exchange” pilot program for small entity inventors. This pilot allows small entity inventors to accelerate one application in exchange for abandoning another application (see press release). The third feedback channel is for comments on the “Green Tech” pilot program which allows applicants to accelerate applications in certain green technologies (see press release). According to the USPTO, information on additional USPTO programs will be posted for feedback on a regular basis.