Rough Patches

Hello, everyone.  After seeing a couple of new comments come in, I decided I should go ahead and post something I’d been working on for a while.

I haven’t posted for two reasons:

  1. The academy gave me specific topics to cover on specific dates, but since I cannot comment on actual applications or patents, I have found it more difficult to come up with new topics.
  2. There was a period during which I was simply overwhelmed with everything I had to do; not because production was oppressive, but because I just have a lot going on!

For everyone who has waited for new posts: I still enjoy the job very much.

At any rate, here is something I started writing a while ago and decided to put up tonight.

Reading blogs dedicated to IP, some attorneys think that the mantra at the PTO is “reject, reject, reject.”  Rather, from almost day one I heard “build up your pipeline, build up your pipeline, build up your pipeline.”

For people considering taking the job, it is very important to understand how the production system at the PTO works, and when the job is easier or harder.  For example, the first 2 months are very easy, if you have the capacity to arrive on time and remain awake during lectures.  The early months of the academy do not present a high-pressure environment.  The next five or six months are still spent in the academy, but you also have some examining time, which means that you do actually examine cases and send out office actions.  However, the only things you are  really responsible for are:  a) showing up on time for classes and b) doing enough first actions to meet whatever minimum percentage of production your trainer expects of you.

When I looked into taking the job, I spoke to examiners who had been there for at least a couple of years.  A recurring theme was that there is a period in which an examiner must produce enough first actions to meet production, while simultaneously responding to amendments (for “free”, i.e., no counts).  This is actually a point at which many examiners quit, because they find themselves working unpaid overtime just to meet production (if they meet production at all).

However, at some point an examiner starts getting enough allowances, abandonments, and Requests for Continued Examination such that only half or  a quarter of her counts are coming from first actions on new applications, and the job becomes much easier.

Of course, if the examiner does not continue doing first actions on new applications, the “pipeline” will dry up, and that rough period will have to be endured yet again.

To get an idea of how this works, potential examiners should understand something about how production works at the USPTO.  Examiners get one “count” for a new first action on the merits for an application and for a disposal.  A disposal can be an abandonment (applicant has decided to no longer pursue a patent), an allowance (the office agrees that the application meets the statutory standards, and will be issued as a patent), or an RCE (Request for Continued Examination – applicant has decided to pay a fee to continue prosecuting the case after the examiner has sent a final office action).  Examiners also get one count for an examiner’s answer (if applicant appeals) and two counts for a first action allowance.

Every examiner has a certain level of “production” he must keep in order to be “fully successful” at his job.  This is dependent upon what GS level you are, as well as what technology you examine.  Technically, production is computed based upon “balance disposals,” but it is easier to think about things in terms of counts, so I’ll explain from that perspective.

Let’s take a hypothetical examiner who must do ten counts per biweek.  If this examiner works five days a week, that means he must do one count every day.

When he first starts working on applications, the only counts he can get are from new first actions.  So our hypothetical examiner must read and understand the specification and claims, check that the claims are for statutory subject matter, check that the claims are enabled and definite, and then search for prior art that would read on the claims as presented.  After this search, the examiner may determine that the claims are patentable, convince his supervisor of same, and then write up a notice of allowance.  This would give him two counts.  More likely, the examiner will find art that reads on the claims, or some combination of art the examiner believes would be obvious to one of ordinary skill in the art to combine to arrive at the claimed invention, or formal issues that require revision before allowance.  In that case, the examiner receives one count.

An examiner’s production may be lowered based on “other time” he receives (for staff meetings, lectures, etc) which lower the total number of examining hours for the two week period, and thus reduce the number of counts he is expected to produce proportionately.  This actually does make a big difference.  But for simplicity’s sake, this examiner gets no “other time.” He’s cranking out a count per day, sending out non-final first actions on the merits.  Applicant has three months to respond, which may be extended to six months.

So somewhere between three and six months of examining, the examiner starts getting amendments.  Now, the examiner has to reply to these, and he has to reply to them within two months of receiving them.  More likely than not, he will be receiving just as many amendments back as he sent out first actions.  He does not get counts for responding to the arguments or amendments from the attorney.  So at around 8-10 months into the job, the examiner (if he started out producing at 100%) must now do one new action per day, plus one amendment.  Depending on how good a job the examiner did on the first action, and how confident he is in arguing, amendments might take very little time or very long (possibly as long as doing a whole new first action, depending upon a range of factors).

For an examiner who was struggling to meet production in the time he had, this can be killer.

Now, I don’t mention this because I want to scare potential examiners, or because I want sympathy from attorneys and agents.  Rather, this is just one phase of the job that examiners must go through.  A crucible that tests the will and training of the new examiner.  Some people quit because they can’t see the light at the end of the tunnel.

There is light, however.  As you get better at the job, you become better able to recognize allowable subject matter.  And you get better at presenting your arguments for allowances.  That means that your response to an amendment suddenly earns you a count.  I know attorneys hate to hear this, but the more final office actions you send out, the more abandonments and RCEs you are likely to receive. Abandonments give you a single count.  RCEs give you a count when applicant sends in the paperwork (it is an abandonment count), another count when you respond (just like a first action), and another count when you dispose of the application.

I don’t want to stir the pot on the (touchy) issue of RCEs.  My point is that by the year or year and a half mark, examiners should be getting more counts coming in from those responses to amendments that previously seemed like such a strain.  It’s called building up your pipeline.

I’m probably going to do a follow up post on this topic, highlighting what can go wrong from an examiner’s perspective to disrupt this process.

For those of you still out there… thanks for reading.



Today was our graduation. Congressman Conyers was kind enough to attend and speak at our ceremony, as did Under Secretary Dudas and Deputy Under Secretary Peterlin.

Congressman Conyers was presented with an honorary certificate of completion of the Patent Training Academy. I may add some more details to this post later, but it isn’t as though there was new information conveyed.


Re: Who Trains Whom?

JPE has an interesting post about how examiners are really trained… via the attorneys and agents who respond to our office actions.  I don’t have quite as much to say on the matter as JPE does, but I figured I would contribute my little bit of experience to the discussion.

The first thing I want to address, however, is JPE’s suggestion that the burdens of the production system cause quality to go down.  I’m not sure this is necessarily the case.  To a large extent, it depends on the trainers we initially have and the feedback we get during the training process.  For some students in the Academy, this is the most in-depth and detailed analysis of their Office Actions that they will ever receive from a supervisor.  Other trainers really only look for formal matters and leave the “training” to the attorneys.  Because lectures are addressed to students in all arts, we tend to learn the material in the abstract.  While we were given some exercises specific to our arts, we have to learn to apply what we’ve learned through writing real Office Actions.   So I’m not sure that its necessarily the production system per se that makes doing quality work difficult; it’s trying to figure out how to apply all this stuff to claims and limitations that are quite unlike what we’ve seen in lecture.

In general, I would say that students judge the quality of their actions (or lack thereof) by a few different standards:

  • What does your trainer or TA say about it?
  • What does the MPEP say about it?  Alternatively, what did your trainer or TA tell you the MPEP says about it?
  • Did applicant amend substantially, or did he just change a few words?
  • What is the “tone” of the response?

I’ll just say a few words about the last one, tone.  Some responses are very – shall we say – firm about the job the examiner has done.  Many new examiners are easily worried by the arguments they receive from attorneys, and if the tone is harsh (even if complying with Rule 3), they question whether or not their actions are reasonable.  But there’s a problem: the examiner in training will then take that application to someone else (trainer, TA, primary, SPE, etc) who may then tell the examiner that the attorney’s arguments are incorrect.  If the other examiner’s analysis seems reasonable, the new examiner now feels as though he has been bullied.  So now, he’s less likely to respond to that severe tone when he comes across it in the future.

Good examiners welcome good arguments, of course.  It helps us to do our jobs better, and sometimes teaches us to never do something the way we did it before.  Unnecessarily combative arguments can often have the reverse of the desired effect.

I don’t mean to imply that such replies are common or predominant.  They represent a small percentage of the replies I receive.  And while the right answer is to always treat each application on its merits, and to do the most legally correct job possible, it is also true that examiners are only human.

“Prepare Yourself…”

Today we had another MPEP preparatory session, although this one was more general and aimed at improving our test taking ability overall.  We went over some questions, discussed answers, and heard about strategies that would help us locate the answers more quickly when we actually take the proficiency exam.  The exam is scheduled for late December, now, before the holiday.


“131 Part II…”

Today was part two of our 131 affidavit lectures.  One of the things that strikes me as incredibly interesting about the lectures on 131s is that it doesn’t seem to be straightforward.  Perhaps I should explain.

When we first started learning about 102 rejections, one of the important points that was drilled in was that 102(b) is a statutory bar, whereas 102(a) and (e) can be overcome by swearing behind the reference (submitting an affidavit saying that the invention was actually conceived/created before the 102 reference).  It was a simplified explanation, as was necessary to convey the important points to us.  However, I always felt like there was an implied “just” right before the phrase “swearing behind.”  It wasn’t until I was reading another forum or blog, and someone mentioned that it wasn’t, in fact, so easy to swear behind a reference that I started to wonder if my assumption was incorrect.   Apparently it was.

Towards the end of the lecture today, we got some tips on avoiding 131 affidavits.  Why avoid them? They cost lots of money for applicant.  They are non-trivial to file.  Our presenter pointed out that when the examiner cites only a 102(e) or (a) reference in the rejection, the implication is that the reference is the best art available, and that the date is what stands in the way of patentability.  It would be… frustrating… to applicant to have them spend lots of money on the 131, only to come back with a 102(b) or well-reasoned 103 indicating that there was not, in fact, allowable subject matter.

Thanks for the comments on the last post, btw.  I do appreciate the insights!



Note: Lay-person explanation below.

Note 2:  Spam got so bad in the comments that I had to move to new spam-blocking software.  If your comments aren’t being posted in a timely fashion, send me an email and let me know; I’ll try to find your comment and unblock it.  If it’s a regular problem, I’ll try to find another solution.

We had a lecture on Appeal Briefs today.  It was especially interesting in light of the proposed rules package (as mentioned on just-n-examiner’s blog).

To the presenter (who asked): Yes, this was the class with the blogger, yes, I was there today, and yes, you did a fine job presenting.  Thank you for taking the time out to speak with us.  I haven’t mentioned it in a while, but I still do appreciate the work of the speakers who come to talk to us.   For the most part, they are energetic people who seem to enjoy both teaching and the subject matter.

I think we went into just enough detail for an intro to the topic: we covered the periods for reply, what is required and optional for an appeal brief, and the (very) basics of the Examiner’s Answer. Since writing an Examiner’s Answer is going to be so far off into the future for most of us, it probably wouldn’t make sense to go into to too much more detail than we did today.

I do have a question about Pre-Appeal Briefs for the practitioners out there: I see a lot of comments on JPE’s site about the cost of appeal briefs, only to have examiner’s reopen prosecution after the brief has been filed.  In our class, we discussed the Pre-Appeal Brief option, which seems to allow applicants to provide a very short pre-appeal brief which would be reviewed by a panel to see if prosecution should be reopened, or if the case should go to the board.  Is this option used? Do practitioners find it to be effective?  From my naive perspective, it makes me wonder why there’s still a problem with examiners reopening prosecution after an appeal brief.

Layperson explanation: When an examiner rejects claims twice, applicants can appeal to the Board of Patent Appeals and Interferences.  This is applicant’s first avenue for judicial relief if applicant feels that the Office is not properly rejecting their claims.  When applicants want to appeal, they are required to submit an Appeal Brief, which is very, very costly for applicant.  Examiners then must write an Examiner’s Answer in reply to the Appeal Brief.


“Stop Interfering!”

We had two lectures today, both from representatives of the BPAI (Board of Patent Appeals and Interferences).

The first lecture dealt with interferences. The easiest way to sum it up would be “find someone who knows what they’re doing.”  Basically, interferences fall into that territory where two applications or an application and a patent are claiming the same invention, but the prior application/patent cannot be used as art against  the other.  They are very rare.  They are complicated.  I won’t even begin to pretend to understand what goes on, there.  The three most important things I pulled from the lecture are: the application must otherwise be in condition for allowance, get help from an interference specialist in your TC, and the BPAI takes care of the dirty work.

The second lecture concerned how to create better office actions, with a focus on making prosecution understandable to whoever might be reading the file file wrapper, including BPAI judges.

We also had a small “ice cream social” this afternoon, which was nice.