“Understanding the unique lens through which each examiner is viewing the application and prior art is critical to working effectively with Patent Examiners.”
As a Patent Agent, the work product coming out of the U.S. Patent and Trademark Office (USPTO) seemed random to me. This article shares what I learned as a USPTO Patent Examiner that lifted the veil and shed light on that randomness.
As a Patent Examiner I learned a powerful lesson: the approach that a Patent Examiner takes in interpreting claim language is learned by “on the job” training while working with USPTO trainers and other experienced USPTO examiners. The USPTO does not give new Patent Examiners detailed training on how to interpret claim language. Understanding the unique lens through which each examiner is viewing the application and prior art is critical to working effectively with Patent Examiners. Some Examiners interpret very broadly and allow fewer applications, while other examiners interpret more narrowly and allow more applications.
What I Learned at the USPTO
- Examiner Production System
The USPTO production system is measured in two-week intervals (i.e., biweeks). Examiners typically have more time at the beginning of the biweek and less time at the end of the biweek. The Examiner’s production system encourages a case to be disposed of (e.g., allowed, abandoned, or continued). For an interview, the Examiner has one hour for the entire interview process (e.g., schedule, prep, perform interview, and create summary).
The Patent Examiner position felt like an assembly line to me. There was a lot of pressure to get work products out the door while meeting a minimum quality standard. In my experience, the Examiner’s performance is mostly judged on how much work they get out the door and not as much on the quality of the work, so long as it meets the minimum standard. As an Examiner, there is no reward for going above the minimum standard in quality but there are rewards for getting more work products out the door.
In my USPTO patent training lab, half the new Examiners resigned within the first year. I know of no other employer of college educated professionals with this retention rate.
A big surprise for me was that the people within the USPTO are aware of the current quality levels. During training, lower level management made comments indicating that the approach to quality will not change without Congress’ intervention.
- Patent Training Academy
The USPTO trains the Examiners at the Patent Training Academy. I found the USPTO training to be so high level and generic that it did not effectively teach the practical aspects of patent law. I believe this lack of practical, technology-specific training has contributed to the diversity of work products coming out of the USPTO.
- How Restriction Requirement Petitions are Handled
When petitioning a restriction requirement, a Technology Center Quality Assurance Specialist (TQAS) reviews the restriction to determine if the Manual of Patent Examining Procedure (MPEP) was followed. The TQAS will evaluate the validity of the restriction requirement based on the threshold of the MPEP being adhered to from their viewpoint. None of the TQAS I met used the “abuse of examiner discretion” threshold. In practice, the current Cooperative Patent Classification (CPC) system is so fine-grained with classification numbers that it does not take much effort for the Examiner to make a case that the claims span different classification numbers, thus making the restriction valid.
- The Permanent Primary Examiner
Once an Examiner becomes a Primary Examiner, the Examiner can sign their own work. The Primary Examiner designation is permanent and cannot be revoked. I do not believe it is in the best interest of the inventors using the USPTO to allow the Primary Examiner to basically work unchecked. There are quality assurance departments within the USPTO, but they do not in my opinion thoroughly evaluate enough Office Actions to be effective at weeding out bad work products.
- Art Unit Assignment of Applications
The process the USPTO contractors use to assign patent applications to art units appeared to me to be somewhat random. The USPTO has a system to reassign applications to the correct art unit when the application is initially assigned to the wrong art unit, which I used significantly more frequently than I thought I would.
- Patent Search Tools
The main patent search tool (EAST) is keyword-based and requires the Examiner to create a keyword description of the invention to search. Google Patents and Google Scholar are included in many examiners’ favorite search tool set, especially for non-patent literature (NPL). The other artificial intelligence (AI) based search tools (e.g., ip.com) I used at the USPTO did not provide meaningful results when pasting in an entire claim the majority of time (maybe ~5% of time was accurate) but when they were right, they were very accurate. When I narrowed the search down to a handcrafted search string, I saw significant improvement in the AI based search tools.
I have been impressed with USPTO Director Andrei Iancu addressing problems with the patent system. When Director Iancu was first appointed, I was working as a Patent Agent. I was impressed when Director Iancu started addressing the 35 U.S.C. § 101 issues. Later as a Patent Examiner, Director Iancu started addressing internal USPTO issues like an outdated IT system and search tools not progressing at the same rate as the prior art is growing. One thing Director Iancu said at a USPTO employee meeting that resonated with me was that the Patent Examiners should “issue patents with the appropriate scope”.
How I Apply What I Learned at the USPTO
Conduct Interviews for Rejections and/or Objectionsa.
a. Meaningful Agenda
Consider creating a meaningful interview agenda (e.g., summary of arguments, proposed amendments, etc.) that gives the Examiner time to prepare a meaningful response during the interview. As the agenda adds to the file wrapper, the agenda may hurt the client if the patent later gets litigated.
b. Treat Examiners like Humans
Remember, the Examiner is a human being who is under challenging time constraints and who is determining the USPTO’s position. Try to keep a friendly tone and be appreciative of the public service the Examiner is providing (which can be extremely difficult when the quality of the rejection is less than expected). Being positive and appreciative may help with some Examiners. I’ve found that some of the best prosecution practitioners have very good people skills and can adapt to the Examiner with whom they are working. Other examiners have told me stories of practitioners becoming aggressive and yelling. This almost never works. Emotional outbursts usually only serve to stall the application at the point it was at before the outburst.
I am very careful not to make the tone of the interview adversarial. Making the interview adversarial will most likely cause the examiner to dig in their heels. The examiner has taken a position and it is more fruitful to understand why the examiner had adopted that position. I respectfully ask what the examiner is thinking and how he/she got to that conclusion. I try not to explicitly mention appeal. If I am confident in my position, I would say I will look at my options and speak with others.
c. Two Key Aspects of Understanding the Examiner.
First, focus on understanding the Examiner’s point of view. For the points of disagreement, explain in simple engineering/scientific terms the difference, e.g., why X and Y are different, and, if the Examiner remains unconvinced of the position, ask the Examiner why they consider X and Y the same. If the Examiner is maintaining their position that X and Y are the same, ask the Examiner how to clarify the difference between X and Y. After creating a good rapport with the Examiner, some Examiners may suggest claim language to distinguish over the prior art.
To determine if the examiner is junior, a junior examiner will have an additional signature at the bottom of the Office Action. If working with a junior Examiner, try to determine if someone above them instructed them to take a certain position in the Office Action. If a junior Examiner was instructed to take a certain position, there is no hope of getting them to change the position without working with the person who instructed them to take the position. For example, beginning examiners are typically brought in at the grade GS-7 unless they have an advanced degree (e.g., JD, PhD, etc.). A GS-7 Examiner is not expected to recognize 35 U.S.C. § 101 rejections. Thus, a GS-7 Examiner cannot withdraw a 35 U.S.C. § 101 rejection without consulting with the person who flagged the 35 U.S.C. § 101 problem.
For the second key aspect, understand how narrowly or broadly the Examiner interprets the claims. This is the lens I mentioned in the introduction. Some Examiners interpret broadly and allow fewer patent applications, while others interpret narrowly and allow more patent applications. Some non-attorneys have trouble with the gray area of claim interpretation and most examiners do not have a law degree. When I was in training at the USPTO, I would go around and around with my trainers about whether a prior art taught a claim limitation. It felt like the trainer was ignoring my analysis and did not understand the technology. I had a light bulb going off moment when I realized we have different interpretations of the application and the art. Working daily with Patent Examiners behind the scenes of the USPTO taught me that each Examiner interprets differently. Once I learned this interpretation lens for each person that had to sign my work, it made getting work out the door much easier. The same concept can be used during prosecution when dealing with the examiner.
d. Examiners and Pure Legal Arguments
Since most Patent Examiners are not attorneys, rock solid legal arguments are not as persuasive to Patent Examiners as they would be when read by another attorney. When arguments are not tied to the MPEP, these non-MPEP arguments are likely to be meaningless to an Examiner. Examiners have very little training on how to interpret case law. The appeal board consists of attorneys; thus, legal arguments will be more persuasive during appeals.
e. When to Include Inventors in Examiner Interview
I have heard multiple Examiners say that they would like to talk with the inventors during examiner interviews. My fellow practitioners have told me about how successful interviews have been when including an independent inventor. To determine if the inventor(s) should be included in the interview, when I have inventor(s) that I trust to stay on script along with an assignee that understands the risk/reward of letting the inventor(s) talk with the Examiner, my preliminary plan when scheduling the interview is to tell the Examiner that when I was an Examiner, I heard some Examiners say they wanted to talk with the inventors and ask the Examiner if they would like me to include the inventors in the interview. If the Examiner says they would like the inventor(s) in the interview, I would include the inventor(s); otherwise, if the Examiner says no or is neutral, I would not include the inventor(s) in the interview. Having the Examiner associate a person with a patent application could help in advancing the case.
f. Bring in the Primary Examiner or SPE
If the Examiner is not being reasonable and I have a strong case, I may ask if we can bring in the patent Examiner’s Primary Examiner or Supervising Patent Examiner (SPE) to give a second opinion. If the Primary Examiner/SPE discussion is not productive, then I consider going to the Technology Center (TC) Director. Though the MPEP has no procedures that involve calling a Primary Examiner, SPE, or TC Director, I have found the USPTO leadership cares and wants the Examiners to do the right thing. As with any process that is not laid out in the MPEP, this could backfire and/or be met with an unhappy Primary Examiner, SPE, or TC Director. I would in most cases at a minimum discuss the issues with a SPE before filing an appeal.
- Restriction Requirements
There is a better chance of getting a restriction requirement overturned than I thought. At the USPTO, the highest-ranking person’s opinion is given deference compared to opinions of those below them, and, in this case, a TQAS opinion overrules that of the Examiner.
a. Help Examiner Understand Problem Solved
If possible, help the Examiner understand the problem solved, which may aid the Examiner in prior art searching by being able to look at how others possibly solved the problem addressed by the current invention(s). As an Examiner, I examined applications that were so generic I applied broad prior art and the true invention did not come out until after the first amendment. I have been advised by a patent attorney with litigation experience that the problem statement needs to be broader than the broadest claims. Also, the problem statement needs to be updated if the claims are amended to become broader.
b. Describe Inventive Concept in a Few Sentences
Unless trying to make the application difficult to find in a patent search (e.g., a non-practicing entity patent application wanting to create a trap for a patent infringer to fall into), consider creating a sentence or two in the summary that describes the inventive concept (i.e, a short summary of what makes the invention novel) to help the patent Examiner in searching. I have been advised by a patent attorney with litigation experience that the inventive concept statement needs to be broader than the broadest claims. One should always update the inventive concept statement any time the claims are amended to become broader.
c. Work in Standard Keywords
Consider using the standard keywords in the patent application. In one class, IPWatchdog Founder and CEO Gene Quinn spoke of drafting using “a cup” versus “a liquid-containing vessel”. In this case, consider using “cup”, as that will be most likely be how the examiner and a potential infringer will search. Overall, I’m trying to give the Examiner the information they need to expedite examination instead of making them guess about the application and possibly go down a wrong path. Even if the client wants the invention described as a liquid-containing vessel, try to get the client to put something like “before liquid-containing vessels, liquids could not be heated by a cup”.
d. Consider boilerplate language to interchange components
Consider adding boilerplate language stating that components and/or methods can be interchanged, which may aid in finding support for claim amendments that avoid prior art during prosecution. For example, some applications that I read defined a method and then a generic computer but never explicitly taught the method could be performed on the generic computer. I have also seen applications where there are multiple embodiments, with each embodiment being a slight variation, but the embodiments are not tied together. As an Examiner, on multiple occasions I would find a claim limitation in separate embodiments of a prior art teaching, but the prior art teaching lacked a bridge to combine those limitations which did not allow me to reject the claim with this prior art teaching. Though a little dated, an example of wording that can be added to an application that helps tie various embodiment together includes the following:
All features disclosed in the specification, including the claims, abstract, and drawings, and all the steps in any method or process disclosed, may be combined in any combination, except combinations where at least some of such features and/or steps are mutually exclusive. Each feature disclosed in the specification, including the claims, abstract, and drawings, can be replaced by alternative features serving the same, equivalent, or similar purpose, unless expressly stated otherwise.
This passage allows support for any permutation of the existing applications. As an Examiner, I rejected multiple patent application amendments due to the amendments not having support within the patent application. Some practitioners disagree with adding an interchangeability boilerplate, as it could possibly be considered an admission that the interchangeable components and/or methods are obvious variations; thus, prior art teaching a variation of a feature may be considered to render obvious a claim to the feature.
Improve Quality at USPTO
The following are ideas I believe will help to improve the quality of the USPTO work products.
- Standardized Office Action Claim Mapping Format
Currently, Patent Examiners perform claim mapping in any format they choose, so long as it can be added to a Microsoft Word document. I believe a way to improve quality is to require a standard claim mapping format that has every limitation mapped out. For example, a tool that copies the claims into the Office Action and prompts the Examiner to highlight a part of the claim, which opens a window so the Examiner can insert the prior art reference citation. This would make it easier to flag applications that have broad mappings (e.g., “claims 1-5 are rejected under 35 U.S.C. § 102 as anticipated by Doe pages 5-20”) for quality assurance to review. Also, as artificial intelligence becomes incorporated into patent examining, a standard data format will allow more accurate models to be trained thus giving more accurate results.
- Requirements to Maintain Primary Examiner Designation
I believe one way to improve quality is to establish a mechanism to regularly review the Primary Examiner’s status and withdraw Primary Examiner designation for rogue Examiners. From my experience, it appears some Primary Examiners will take short cuts by only mapping to the claim limitations they feel could be the most novel and ignore the limitations they believe are well known in the art. This shortcut makes the practitioner’s prosecution very difficult, since the practitioners typically do not know the given art as well as the Patent Examiner.
- Reduce Examiner Turnover
The USPTO wastes a tremendous amount of money to train Patent Examiners who only stay with the USPTO for a short amount of time. I would like to see the USPTO transform itself into an organization that can attract and retain the top talent across the industries the USPTO supports. An easy way for the USPTO to improve quality and/or reduce the cost of a patent is to reduce the wasted training cost of Examiners by improving retention.
This is my personal perspective of the USPTO. I’m sure others will have a different opinion and may find my opinion off mark. It is my hope that this article will give my fellow patent practitioners a few more tools in their toolbox to assist in working with the USPTO. It is not my intention for this article to be the definitive way to work with the USPTO in every case.
Please share your experiences in the comments below.