Any patent attorney knows that the behavior of patent examiners can vary greatly. In this article, I describe five different types of patent examiners and suggest prosecution strategies for each to help you get better outcomes for your clients.
The Master Patent Examiner
The Master is a patent examiner with a low grant rate but who is also exceptionally good at his or her job. Masters are able to find good prior art for just about every patent application that comes across their desk, and they thus have high affirmance rates on appeal.
Here is an example grant rate timeline for a Master:
This grant rate timeline shows the percentage of cases that are allowed (green), pending (yellow), and abandoned (red) at each month after the first office action. This Master has allowed only 2.5% of applications at three years after the first office action and is in the 97th percentile for examiner difficulty across the USPTO.
On appeal to the Patent Trial and Appeal Board (PTAB), this examiner is affirmed 94% of the time. This Master is thus able to find good prior art, write convincing arguments, and persuade the judges nearly all of the time.
Recommended strategy: Narrow your claims and work hard to write persuasive arguments.
The Ideologue also has a low grant rate, but for reasons of ideology rather than the merits. A significant number of patent examiners appear to be “anti-patent” and refuse to grant patents for worthy inventions. This is the most frustrating type of patent examiner for a patent attorney because strong arguments fall on deaf ears.
An Ideologue will have a grant rate timeline similar to the one shown above for the Master. The difference between the two, however, is easily seen in the appeals statistics.
A first characteristic of an Ideologue is a low affirmance rate on appeal. An Ideologue does not have good arguments for refusing to allow claims, and thus the PTAB often finds for the applicant.
A second characteristic of an Ideologue is a high rate of reopening prosecution during the appeal process. Some Ideologues frequently issue an office action after the appeal brief has been filed, thus presenting resolution by the PTAB. This appears to be a strategy to avoid allowance by keeping prosecution open indefinitely.
For more junior examiners, the ideologue behavior may be caused by the primary examiner or SPE who reviews the junior examiner’s work. As a result, for some examiners, there is a significant change in grant rate after the examiner becomes a primary examiner.
Recommended strategy: Appeal early and consider contacting the examiner’s supervisor for assistance.
The Decider is an examiner who makes up his or her mind early during prosecution and won’t be convinced otherwise. You could call them stubborn or hard headed.
Here is an example grant rate timeline for a Decider:
A Decider usually makes up their mind by the first RCE. Even if you continue for many years with many RCEs, you will unlikely be able to convince them otherwise.
Recommended strategy: Once you get to a second final rejection (after a first RCE), then appeal.
A Negotiator is an examiner who will continue to work with applicants to come to a compromise and find allowable claims. The more you continue to work with a Negotiator, the greater your chance of getting claims allowed.
Here is an example of a grant rate timeline for a Negotiator:
As you can see, even after three years of prosecution, continuing to work with the examiner will increase your chances of getting claims allowed.
Recommended strategy: Continue to work with the examiner and work harder to find alternative patentability arguments or a compromise. Interview early and often.
A Granter is an examiner who grants a lot of patents and does so quickly! While it is nice as a patent attorney to be able to get a good outcome for your client, there is also a risk that the examination was less than thorough and that your patent may be more susceptible to invalidation in the future.
Here is an example of a grant rate timeline for a Granter:
At one year after the first office action, this Granter already has a grant rate of 95%. Granters often have early RCEs, and I suspect this occurs because applicants need to file an RCE to submit additional prior art (e.g., there was a first action allowance and the applicant hadn’t yet filed an IDS).
Recommended strategy: Add more dependent claims so you have a stronger patent in case there is good prior art for your independent claims.