Posts Tagged: "compact prosecution"

hange does not come easily. At a minimum, the PTO must stop encouraging and rewarding examiners for actions that defeat the objectives of the office. As long as examiners are credited and rewarded for acting upon every application that they can force an applicant to file, examiners can be expected to seek the credit and reward, and the backlog will be with us. As long as examiner performance is based upon the conventional (N + D)/2, the incentives will foster counter-productive behavior in the examining corps and the Office will not make meaningful strides toward accomplishing its mission. Examiners will do what they are rewarded for doing – generating as many N’s and D’s as possible without regard to whether anything is really being accomplished.

Of course, it will be most useful for patent examiners to review and truly internalize the guidelines, but there is some excellent language here that is quite practitioner and applicant friendly. There is explanation of situations where a rejection should be given, but more importantly from a practitioner standpoint will be those examples and illustrations of when a rejection is not appropriate. The discussions of what an appropriate Office Action should include will no doubt be particularly useful as well as practitioners try and hold examiners feet to the fire to provide the type of information required in order to truly appreciate any problems identified by the examiner and how to appropriately respond. Indeed, it is my guess that patent practitioners will be yelling “AMEN” from the top of their lungs as they read various portions of the Guidelines.