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An Inside Look At The Patent Examination Process (Updated from January 2007)
March 14, 2010

By Scott Wolinsky

The successful prosecution of a patent application at the U.S. Patent and Trademark Office (USPTO) requires not only a novel invention and adequate prosecution skills, but a bit of luck. Each patent application is examined by an individual selected from an extensive and diverse pool of examiners with varying personalities and technical expertise. The experience and allowance rates of each examiner vary greatly

Who Is Examining Your Patent Application?

Once received, each patent application is given a serial number and classified (categorized). A patent examiner is then selected based on the classification and serial number. One may wonder whether the selected examiner will be skilled enough to properly search existing prior art references upon which the allowance or rejection of the claims of the patent application are based. After all, every examiner starts with his or her first patent application after receiving just two weeks of training at the USPTO Patent Academy, where he or she learns the basics of the Manual of Patent Examining Procedure. Will your patent application be examined by that newly recruited examiner? If so, will the examiner’s supervisor (supervisory patent examiner or SPE) spend enough time to properly review the patent application? There is always a possibility that the SPE is not sufficiently skilled in the art in which the patent application is classified. When an examiner is promoted to SPE, he or she is often placed in charge of an art unit different from the one in which he or she previously examined. For example, a primary examiner with eight years in the medical equipment field may end up assigned to supervise a group of examiners in the telephony art unit.

Patent examiners at the USPTO are initially hired at several different federal pay scale grade levels based on a series of minimal qualifications. All examining positions require at least a bachelor’s degree in computer science, physical science or engineering, and varying levels of professional engineering experience or graduate study (0-3 years), The salaries of entry level patent examiners presently range from $41,969 to $90,866. Overtime is strongly encouraged after several months of experience is accrued, and it is not unusual for a junior examiner with three or four years experience to make more than $120,000 annually with overtime and bonuses. The USPTO also hires recent graduates from law school, as well as candidates with doctoral degrees, who are normally placed at the upper salary levels. Patent examiners hired at the middle salary levels are considered for promotion after six months of service. Thereafter, these patent examiners are normally promoted to a higher salary level on an annual basis.

The odds are slim that your patent application will be allowed by an examiner with less than one year of experience. SPEs want these new employees to gain experience rejecting patent applications, and there is considerable pressure on these new hires to do so. Many examiners are taught the “one palm rule,” whereby if the independent claim is shorter than the palm of their hand, they should reject, reject, reject. Examiners actually base their reputation on their allowance ratios. If you knew the allowance rate of your examiner, you could probably estimate your odds of getting your patent application allowed. Even if the examiner rejects all of your claims, the SPE reviewing the application will still be likely to sign away on the examiner’s written report, otherwise known as an office action, without closely scrutinizing the rejection.

After four or five years of a successful examining career, the patent examiner is permitted to advance to the Partial Signatory Program. Until this point in the examiner’s career, all office actions, whether non-final or final, must be signed by the examiner’s SPE. During a six month period, the examiner is granted temporary partial signatory authority to sign non-final office actions. After several SPEs have reviewed the examiner’s non-final office actions, the examiner may receive permanent partial signatory authority. With this authority comes increased responsibility, yet no pay raise or formal promotion.

After having partial signatory authority for six months, the examiner is permitted to advance to the full signatory program. During a six-month period, the examiner is granted temporary full signatory authority to sign allowances and non-final office actions. If the examiner of your patent application is in this program, you should remember that he or she will be particularly cautious before issuing a notice of allowance. The examiner’s supervisor is paying careful attention to the actions of the examiner, and the examiner wants a promotion. Of course, the examiner must allow at least some (but not too many) of the examined patent applications for review. After another extensive review, the examiner may receive permanent full signatory authority and be deemed a primary examiner.

Some primary examiners are eventually promoted to the uppermost senior examiner salary level ($132,505 – $155,500), as part-time trainers or “expert” examiners. However, at this level, most examiners go on to become SPEs and are no longer actively examining under a high-pressure production schedule. Instead, they manage and review the work of a group of examiners. Bonuses offered to SPEs are dependent upon the performance of the examiners in their group. The SPEs are very protective of their examiners, and will usually defend them vigorously when confronted by a complaining applicant.

Classification And Search

Prior to examination by a patent examiner, a patent application is reviewed by a classifier to determine which art unit will be responsible for examining the application. In many cases, the scope of the claimed invention in the patent application will fall into several possible categories. It is not unusual for the classifier to present the patent application to several SPEs in an attempt to determine where the application should be classified. This process often causes applications to be docketed to an examiner who is unfamiliar with the technology disclosed therein.

The examination quality of a patent application is dependent upon how thorough a search the examiner performs. Examiners often fail to adequately search art classes with which they are unfamiliar. For patent applications with claims that incorporate diverse technology, the examiner is expected to meet with other equally busy examiners, but this expectation is not always met.

Is your patent application classified in a high-profile art that is presently undergoing extensive media attention for issuance of controversial patents (e.g., genetic engineering) or poor quality patents (e.g., business methods)? If so, you should expect extensive and sometimes unexplained delays in receiving office actions, and it is less likely that you will receive a notice of allowance for your patent application.

Time is Money – The USPTO “Count” System

Each USPTO examiner is allocated a specific number of hours to spend during the prosecution of a patent application. Various performance parameters, such as the examiner’s “percent of expectancy” and “percent allowed of disposals,” are carefully monitored by supervisors on a biweekly basis to determine performance review results, promotions and bonuses.

Unlike in a law firm where attorneys bill for each hour worked, patent examiners work on a piecemeal basis whereby the examiner is credited only for the number of applications examined. An examiner earns two “counts” per patent application examined. A count is equivalent to half the amount of time that the examiner has to complete the examination of a patent application and “dispose” of it. The number of expected hours per disposal is dependent upon the examiner’s experience level and the number of hours allocated to the art examined. The more experience that an examiner has, the fewer hours the examiner is allotted to dispose of an application.

An examiner earns a first “count” upon issuing a first report (office action) regarding the patentability of the patent application and a second “count” when the application is disposed of (allowed, abandoned, or when the examiner responds to an appeal). It is not unusual for an examiner to spend more than the time equivalent to one “count” to complete a first office action. The examiner does not receive extra credit for issuing a second non-final office action, a final office action, telephone interviews or an advisory action. The examiner is allowed to charge one hour of “other” time for each instance when a personal (in office) interview is held with an applicant and/or the applicant’s representative.

An examiner earns two “easy counts” when the prosecution of an allowed patent application that has not yet issued is continued such that new references submitted by the applicant can be considered. This, of course, assumes that the references are not deemed relevant enough by the examiner to warrant the withdrawal of the allowance.

Consider The Examiner’s Position

Patent examiners are human. They are under a great deal of pressure to perform to the highest standards. You can increase your chances of getting your application allowed by making the examiner’s experience with your patent application as stress-free as possible.

You can increase the odds in your favor by limiting the number of claims in the patent application to a reasonable number (e.g., 20 or fewer). Perhaps a major flaw in the USPTO examination process is that a patent examiner is not normally granted extra hours to examine patent applications with excessive claims. In cases involving a large number of claims, it is likely that the examiner will come up with a restriction requirement, or provide a blanket rejection for a large group of those claims. Unless the patent application is examined by an exceptionally conscientious examiner, an excessive number of claims will most likely decrease the quality of the examination.

Always be courteous when speaking with the examiner even if the examiner is being unreasonable. While complaining to the supervisor or the director about an examiner may solve immediate problems, the examiner may hold a grudge and can purposely delay your notice of allowance for years by creating new and seemingly odd rejections. Beware, for the next patent application that you file may be assigned to the same examiner.