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.


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