IP in Depth: Evaluating Patent Examiners
It would be nice if applicants for a U.S. patent could review ratings of patent examiners.
I shop a lot on Amazon. Even when I do not buy from Amazon, I look up products on Amazon.com to read product ratings and reviews posted by other customers in order to help me decide on my purchases. I am not sure who or what company pioneered buyer/customer ratings, but it seems that more and more businesses benefit from having positive ratings on Amazon, AngiesList, HomeAdvisor and similar sites. Knowing others’ firsthand experiences with products, merchants’ customer service departments, service providers, restaurants, etc. provides a level of comfort when making a new purchase, hiring an unknown service provider or trying a new restaurant, particularly when the investment is not trivial.
It would be nice if applicants for a U.S. patent could review ratings of patent examiners and select which examiners to have examine their applications based on acceptable ratings by other patent applicants who have prior experience with the examiners. Unfortunately, this is not the case. Patent applicants cannot select which examiners to have examine their applications and cannot switch examiners once their applications are assigned by the U.S. Patent and Trademark Office (USPTO) to an examiner.
Currently, 8,471 patent examiners work at the USPTO. Only about 40% have full signatory authority (authority to allow patents), and about another 40% have no authority to mail out any examination reports (office actions), let alone independently discuss the merits of an application with the applicant or patent counsel. About 50% of the examiners work from home on a full- or part-time basis in a telework program that was recently suspected of being mismanaged and abused.
After a patent application is filed in the USPTO, it is assigned to an examiner who may have any degree of experience from less than one year to decades of experience. Examiners also vary in terms of having lower or higher allowance rates compared to other examiners or, should I say, are more or less reasonable than other examiners.
Although patent applicants cannot research other applicants’ reviews of patent examiners and choose which examiner to have their patent applications assigned to for examination, once an applicant’s patent application is assigned to an examiner, it is possible to research the assigned examiner’s examination style and develop a strategy that can help to obtain the allowance of the application.
Gathering Allowance Insights
LexisNexis® PatentAdvisorSM provides statistical information gleaned from over 5 million patent applications and allows users to determine the examination styles of individual patent examiners in order to develop strategies for working with each individual examiner. Among other data, PatentAdvisor provides information on individual examiners’ allowance rates, the average number of office actions per application, the percent of applications for which an examiner institutes a restriction requirement, the percent of applications in which there are one (or more) requests for continued examination (RCE), the percent of applications an examiner allows immediately after one RCE is filed, how often an examiner allows an application in response to an Amendment After Final, the percentage of applications an examiner conducts interviews in, appeal outcome statistics, an examiner’s backlog of RCEs, and other pertinent information.
This information is provided both for individual examiners and at art unit levels. In addition, practitioners can gather data and run statistics on groups of their own applications or any group of published applications.
Any number of strategies can be developed from the insights gathered from PatentAdvisor. For example, knowing that a particular examiner has a more favorable allowance rate after an applicant files a notice of appeal than after an RCE is filed can help determine which choice to make both on a cost and likelihood of success analysis. In another example, knowing that a particular examiner allows applications after conducting interviews (and reviewing the examiner’s interview summaries on the Patent Application Information Retrieval, or PAIR, system) can provide a strategy for conducting an interview.
Any views or opinions expressed in this column are those of the author and do not represent those of Ceramic Industry, its staff, Editorial Advisory Board or BNP Media.