Effective Sunday, November 8th, the Office's Revised Count System Initiatives will go into effect, except for those initiatives that will require updates to the Office's software systems.

Most significantly, that means that the new provisions for the docketing of RCEs will come online.


The following initiatives will be effective this Sunday:

* Certification and Recertification
* Patent Examiners' Work Credit
* Changes in Docket Management Policies
* Patentability Determination and Hoteling Waiver
* Examiner-Initiated Interviews

The specifics of these initiatives were discussed in this earlier post.


According to the Memorandum of Understanding regarding the new docketing procedures, RCEs filed on or after November 15th will be placed on the Special New docket; RCEs filed prior to November 15th will continue to be placed on the Regular Amended docket.

As has been discussed here and elsewhere, this is a significant change, because examiners currently are required to act on RCEs within 2 months of when they are placed on the examiner's docket. Under the new policy, examiners will only be required to act on one application on their Special New docket per month. Since the Special New docket will be receiving RCEs, continuations, and divisionals, applications may well accumulate at a higher rate than one per month.

The Office is, however, encouraging examiners to "carefully monitor your docket to avoid developing a disproportionate backlog of RCEs".



As far as the implementation of the additional examining hours and changes to the count system, the Office is still shooting at having the necessary software changes made and tested by the beginning of the second quarter.

Good luck with that.

The Director has been posting weekly to his blog, on a variety of subjects.

Two weeks ago, he posted on the union's adoption of the proposed new count system.

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I wanted to take this opportunity to express my thanks to POPA's membership for voting to adopt the changes to the count system proposed by the task force. These changes were long overdue and represent a major step forward in re-tooling a system that hasn't been updated in more than 30 years. For the sake of both the examining corps and patent applicants, change was necessary.

I decided to move forward with the changes the task force proposed because I genuinely believe they will improve working conditions for examiners, while also putting incentives in place to help identify patentable subject matter earlier in the examination process. While these changes are not designed to be a quick fix, I do believe they lay a foundation for pendency improvements over the long term.

The additional time given for examination will hopefully help examiners resolve issues more quickly. We expect to see quality gains as a result of giving examiners more time to do a thorough search and examination. And we will monitor the revised count system closely to ensure that it is producing the desired results. The task force may consider and propose additional changes if they appear necessary, and will ensure the count system works for everyone.

It will take several months for the changes to be implemented, and possibly even longer for us to know what the effects of the changes may be. But I'm eager to hear your feedback along the way. Please feel free to send me a note via the Director's Blog. We're working to set up other mechanisms for feedback such as wikis and online fora so our employees and outside stakeholders can tell us how these changes are working and whether further changes are needed. I envision this as a truly iterative process, in which we have made a great first step.

Thanks again to POPA's membership for their support. And thanks also to the task force for working together to create a very smart proposal.

Stay tuned for more updates on this exciting development

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There were numerous comments posted in response by examiners with questions on a variety of subjects, including some regarding the Director's comments concerning the patent reform bill's requirement that patent examination be performed in the U.S., and Kappos' opposition to that provision.

This week, Kappos' post on his blog directly addressed the comments to his previous post.

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I'd like to follow up on the comments that came in last week in response to my post on the count system on Oct. 26. I really appreciate all the thoughtful questions, feedback and suggestions. It’s clear you care a lot about how changes to the system will affect the office, and I hope you will continue to use this blog as a forum for sharing your thoughts.

There were several questions about a quote from a recent interview I gave that cited the administration’s opposition to the "sovereign function" language in the current patent reform legislation. I am opposed to the "sovereign function" language because it would block the US from participating in worksharing initiatives with overseas patent offices. I believe these initiatives have real promise, and do not support language in the legislation that could be misinterpreted to limit our ability to pursue work-sharing. Note however that worksharing should not be confused with taking examination responsibility and decision-making away from US examiners. Worksharing does not take examination responsibility or decision-making away from US examiners; it provides US examiners with another tool, like all the other tools we use, to enable our examiners to do the best possible job in examining applications having foreign counterparts.

In response to the questions about whether the hourly addition will be phased out, that rumor is false. Once the package is implemented, even if future changes are made to it, including termination of the entire package, I have committed that examiners will receive a net increase of at least one hour in time over their FY09 expectancies.

In response to questions on when the new system will go into effect, the target is to switch over in the second quarter of 2010. We need this period of time in order to complete reprogramming of the IT systems needed to support the new count system.

I saw a concern expressed that we would stop improving the new system. Not true. My objective at the outset was to develop an initial plan and institute an iterative process for improvement. It was simply unreasonable to expect to revise a complex system that hasn’t been changed in more than 30 years and get it perfect from the outset. The iterative process we have under way includes measuring the effects of the changes once the new system takes effect, gathering internal and public feedback, and meeting on a regular basis to monitor progress and consider additional improvements.

It occurred to me that there are some additional positive changes included in the count system overhaul that might not be getting much notice, such as:

o Providing consistent credit for transferred or “inherited” amendments, which is good for examiners by providing a consistent and fair amount of time to take over prosecution of a case, good for SPEs in knowing the amount of credit is set, and good for applicants in that the new examiner has the appropriate time to get up-to-speed and take “ownership” of the case.

o Increasing work credit certainty for examiners, by giving examiners more assurance that work completed and timely submitted with get counted in a timely manner.

o Balancing the load on IT systems by encouraging earlier submission and review of work.

o Reducing examiner reluctance to allow applications. Due to low allowance rates in certain areas, Primary Examiners have less margin for error since their PAP has an error rate standard. Since the error rate is based on the number of applications allowed, if very few applications are allowed only one error may take the employee out of the “Fully Successful” rating level. The change provides that an examiner won’t be penalized performance-wise based upon a single clear error in Patentability Determination.

o Shifting resources from a focus on Examiner Recertification to front end quality improvements (the Examiner Recertification was designed to review a certain number of Primary Examiner’s office actions in a given year to “recertify” examiners as Primary Examiners. Since there are a number of other reviews of examiners' work and additional ways to assess examination quality and efficiency, the Examiner Recertification is ending and the resources used for those reviews will be re-directed to front end quality improvement programs.

o Changing the Gainsharing Award Program to provide 5% increments ranging from 110% to 130% (110,115, 120,125,130), and adding a new 135% level. (provides more steps in-between previous award levels to allow examiners to have a shorter reach to the next higher-level, and adds a new higher level).

o Providing a six-biweek waiver period for hoteling examiners who receive a rating of record of less than Fully Successful at the end of the fiscal year in order to demonstrate Fully Successful performance in all critical elements and remain eligible to participate in the hoteling program.

Please feel free to share any other comments -- positive or negative -- regarding the count system changes. Thanks again for all the great discussion.

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The thing that has struck me about the whole Patent Prosecution Highway from the start is the fact that all this seems to do is to facilitate what you'd think examiners would be doing anyway.

If you're examining an application, your search would likely uncover any related applications, whether they are US or foreign applications (at least the major Patent Offices), and once found, it certainly makes sense that you'd want to check out the art that was cited by the examiner during prosecution in those foreign patent offices.

It sounds like this will merely amount to the equivalent of additional IDSs (albeit likely pretty relevant IDSs) to be considered.


It is nice to have the Director directly address questions posed by examiners on his blog. Beginning the blog was a great idea on his (or somebody's) part.

A few quick notes about the goings on of late at the Office.



The USPTO's new website went online on October 8th.


The Office has withdrawn its proposed Continuation Rules Changes. You can read about it at Patently-O and 271. Also, the USPTO's press release.

Dr. Triantafyllos Tafas, one of the plaintiffs in the case, doesn't want the earlier district court ruling vacated. Read about it at at Patently-O and IP Watchdog.


The USPTO's First Action Interview Pilot Program has been expanded to allow more applications to qualify. They also refined and simplified the procedures. You can read about it at Patently-O, 271 and I/P Updates. You can also read the USPTO's press release.


POPA members approved the count system changes, although the 63% approval rate cited in POPA's notice hardly seems like a stirring endorsement of the plan by the examining corps.


This afternoon, Director Kappos sent an email to the corps announcing that in order to help with the backlog reduction, limited overtime would be reinstated in the near future.

The AIPLA is in town again this week for their Annual Meeting.

As part of that Annual Meeting, they will be holding the 16th incarnation of Partnering in Patents, 'An Open Dialog Between the USPTO and the Bar' tomorrow afternoon.

These sessions take place at the USPTO, giving the PTO and attorneys the opportunity to get together and have an exchange of ideas.

I've attended the sessions in the past whenever my schedule has allowed. I've very much enjoyed them, and found the presentations and especially the comments/questions from attorneys to be most enlightening, helping me to better understand their views and concerns when prosecuting applications.

I only wish that the Office did a better job of getting the word out to the examining corps. I think the average examiner would definitely benefit from getting a better idea of the mindset of the attorneys that are submitting responses to their Office actions, yet I've seen nothing letting examiners know about what will be happening right in their own backyard tomorrow.

I have to admit a bit of disappointment that this year's conference doesn't include the usual 'Pet Peeves' session. It was great to listen to attorneys and examiners talk about what ticks them off, and then get some feedback directly from their counterparts on why it happened. It is kind of like the comment exchanges on patent blogs, but more productive; since it is generally more civil, it makes for a more substantive and less vitriolic exchange.

I'm hoping I'll be able to get there at some point tomorrow, trying to get more insight into attorneys' viewpoints.

The Office on Wednesday afternoon notified the examining corps of the details of their proposal for a new count system.


The Broad Brush

The new count system includes the following elements:

• Count System Changes and More Time for Examiners: The proposed changes will give examiners more time overall, more time for a first action on the merits, and time for examiner-initiated interviews, while diminishing credits for RCEs and providing consistent credits for transferred or inherited amendments.
  
• Process Changes: These will increase work credit certainty for examiners, increase fairness to applicants, and balance the load on IT systems.
  
• Improved Working Conditions: The proposal includes measures that will help examiners to do a high quality first action, and shift resources from a focus on examiner recertification to front-end quality improvements.
  

• More time to search and identify patentable subject matter earlier in prosecution
  
• An increase in employee morale and a decrease in attrition
  
• A decrease in the number of actions per disposal, the need for rework, and he need for RCEs (though RCEs are certainly available for those filers who need them, and examiners will still receive credit for examining RCEs)
  
• An increase in the number of examiner-initiated interviews, which will resolve issues more quickly and increase applicant satisfaction
  

Well, the Office has kicked off its formal effort to reform the examiners' production system.


The PTO sent the following email this morning to its employees:


Joint Union and Management Task Force Begins Work of Addressing the Patent Examiner Count System

On Tuesday, August 25, a task force comprised of four members from the Patent Office Professional Association (POPA) and four from Patents Management met to begin work on re-engineering the patent examiner count system. The day-long session was kicked off by USPTO Director David Kappos who emphasized the importance of their work, stating, “Creating an examiner count system which gives examiners the time they need to do their job properly and which incentivizes compact prosecution, including the use of interviews, is currently job number one for the agency.” Director Kappos committed his support and involvement to the work of the task force and will be holding regular check point meetings with them.

The task force, led by Deputy Commissioner for Patent Operations Peggy Focarino and POPA President Robert Budens, has been given a deadline of October 1 to recommend a solution which moves the Agency significantly forward towards a new examiner count system which is properly aligned to achieve both efficient and high-quality examination.


Plenty of reasons for optimism here, but a fair amount of trepidation, too. Lets hope they come up with something that is both workable for the examining corps and also helps address the pendency and quality issues.

Newly sworn-in Director of the USPTO, David Kappos, has started a blog.

I'd link to it, but for the time being, it's hosted on the internal USPTO servers, available only to employees of the Office. However, according to the announcement, "we plan to make the blog available to the public in the coming weeks."


In his first post, Kappos says all the right things, and endorses as "achievable" the rather audacious goal set by Secretary of Commerce Gary Locke, of reducing first action pendency to -- 10 months.


You read that right -- 10 months.


Needless to say, I'm somewhat skeptical. It's an awfully ambitious goal. I can't even imagine when the last time first action pendency was at 10 months.


Some of the Director's post:



"I do think this is an achievable goal, and that we can reduce first action pendency even while further improving quality. One key is to expeditiously identify and resolve issues of patentability - that is getting efficiently to the issues that matter to patentability in each case, and working with applicants to find the patentable subject matter and get it clearly expressed in claims that can be allowed. The examiner and the applicant share the responsibility for the success of this process.

On the subject of quality, there has been speculation in the IP community that examiners are being encouraged to reject applications because a lower allowance rate equals higher quality. Let's be clear: patent quality does not equal rejection. Patent quality equals granting those claims the applicant is entitled to under our laws. In some cases this requires us to reject all the claims when no patentable subject matter has been presented. It is our duty to be candid with the applicant and protect the interests of the public. In other cases this means granting broad claims when they present allowable subject matter. In all cases it means engaging with the applicant to get to the real issues efficiently - what we all know as compact prosecution.

When a claimed invention meets all patentability requirements, the application should be allowed expeditiously. In fact, in an ideal world, 100 percent of applications would be allowed because applicants and USPTO examiners would be working from exactly the same mindset, and applicants would submit applications meeting all requirements in the first instance. Of course, we'll probably never see such an ideal world. But by engaging with applicants early on, we certainly can get to the point more quickly, and efficiently allow those claims that are entitled to patent protection."



As I said, this all sounds good, but I was especially struck by the 10 month first action pendency goal.

Kappos has spoken about reforming the production system in some of his public statements. Most of the talk I've heard about this, both within and outside the Office, seems to reflect the belief that the production system is flawed, but can be tweaked to make it more workable.

I don't share this viewpoint.

If the Office is serious about achieving 10 month pendency, I really think they're going to have to blow up the production system as it is currently constituted.

The production system is set up to make sure that examiners process applications in a timely fashion. The ultimate goal is presumably to manage pendency. But it currently doesn't do that very well, and that's because examiners' incentives are not well aligned with the Office's pendency reduction goals.

So let's consider this question: what actions taken by examiners really contribute to pendency reduction? It would seem pretty obvious that first actions and disposals are the key.

But here's the thing: Not all first actions and disposals help reduce pendency; only first actions to initially commence prosecution and the ultimate disposal through abandonment, allowance, or appeal (an appeal that actually goes to the BPAI) would promote pendency reduction.

The express abandonment that is part of the RCE process, as well as the subsequent first action, do nothing to advance the Office's goal of pendency reduction, at least nothing above what any other non-final or final action contributes (which is but incremental progress towards ultimate disposal). This being the case, the question one might ask is "Why do examiners get counts for them?"

[Continuations under 35 USC 120 I'd think would be treated as separate applications, since theoretically these are different inventions.]


In a radically re-worked production system, one which promotes only the Office's pendency reduction goals, I'd figure that examiners would get big credit for an initial first action, since this is clearly the most important action in the entire prosecution of the application. It needs to be thorough, with the bulk of the relevant prior art uncovered right up front.

Since examiners have some, but certainly not all, of the control over the conduct of prosecution, meaning that a stubborn applicant could certainly choose to hang in there for as long as they wanted (and could afford), I'd think that giving examiners some (very) minimal credit for all of the intervening actions would be fair. After all, they are incrementally moving prosecution forward.

Another big payoff should occur when the application is finally disposed of.


What this should encourage is a thorough search up front and an examiner that is very motivated to bring prosecution to a close as quickly as possible.

Under the current production system, examiners are getting more credit for an RCE than they are for ultimate disposal, because they're getting a disposal count when the RCE is filed, and then a first action count when the next action is prepared.

Lets think about at that again. The current production system gives examiners more credit for an RCE than an ultimate abandonment, allowance, or appeal. How in the world does that promote pendency reduction?


There are certainly lots of things that I'm overlooking. There were presumably reasons for implementing the production system as they did in the 1970's. The examination process was certainly very different back then, though.


Of course, this would only be a starting point. Implementing such a system would be really difficult. Production goals and BD quotas would need to be completely re-worked. Even the schedule for when an examiner got their review might need to be changed, since initial FAOM and ultimate disposals occur much less frequently than counts under the current production system. All kinds of unknown factors (such as the period an examiner spends building their docket, before they are getting any disposals) would need to be analyzed and accounted for.

POPA would hate it. Hell, I'd hate it. If a new production system isn't implemented well initially (and after all, what ever is?), examiners would be sure to suffer the consequences while the Office and POPA worked out the kinks.


But guess what? Tweaking the current system is not likely to achieve the Office's pendency reduction goals. When examiners get more credit for an RCE than an ultimate disposal, that system is simply not going to work.

An examiner's job is to sift through the prior art and figure out if an applicant's claims are novel and nonobvious. It should be a completely dispassionate and objective process, driven by only the scope of the claims as presented and what exists in the prior art (speaking in my best Sotomayor-ese.)

It should make no difference to an objective examiner whether they are writing up a rejection or an allowance, nor whether the application is ultimately allowed or abandoned.


The truth of the matter, though, for me, is that it feels better to reject than to allow, simply because it's more conclusive.

(This has nothing to do with production requirements and whether or not I'm getting a count for what I'm doing.)


Don't get me wrong, though. I'm not talking about whipping up some bogus rejection based on crappy prior art that has nothing to do with the claimed invention, or making outlandish combinations of non-analogous art. I'm talking about solid rejections that clearly anticipate or obviate the claims. There is certainly nothing satisfying in denying an applicant a patent to which they are entitled, nor drawing out prosecution longer than is justified.


An examiner generally spends the bulk of their examination time searching for relevant prior art. This can take a whole lot of time, especially for the initial search, depending upon the invention being claimed and the examiner's familiarity with the claimed subject matter.

The thing is, once I find good prior art to apply, I know I'm done. There is a definite conclusion to the process (for the current set of claims), and I know that the invention, as currently claimed, is not deserving of a patent (subject, of course, to persuasive arguments, which does sometimes happen).

Making the decision to allow an application, though, is somewhat less conclusive. Sure, once I've done a thorough search and satisfied myself that I've found the best prior art available, I'm not reluctant to allow an application (OPQA be damned!)

Still, who knows what unavailable prior art might be out there? Some hardcopy of a journal that is sitting in some school's technical library in Boise? Perhaps an advertisement in a newspaper on microfiche in Berlin?

Actually, to tell you the truth, those possibilities don't even bother me that much when making an allowance. It's really the possibility that if I tweaked my search a bit, I might end up finding the mother lode of invalidating prior art out there somewhere on the Internet.

I've had instances in the past where the applicant had written their specification in such a way that it excluded some term that very well characterized their invention and was commonly used in the art. When that has happened, it has often taken a while and much searching and reading to find that term. But once found, the searching process suddenly got a whole lot more fruitful.

Obviously, you have to stop searching sometime. (The count system makes sure of that.) When you do, you just have to trust yourself that you've found the best art that is out there and allow the thing.

Even so, you never really know for sure. (There's a reason that 'Reasons for Allowance' gets phrased '...distinguishes over the prior art of record...', right?)

[One of the first questions I asked my SPE when I was new at the Office was "How do you know when to stop searching?". I never got a good answer. Now new examiners ask the same question of me, and I still don't have a good answer to offer.]


Rejections, when done correctly with good art (yes, let's emphasize that), are simply more definitive, more conclusive.

And that's why for me, they are more satisfying (particularly when it was a tough search to perform). To be sure, awarding a deserved patent is satisfying as well, particularly when you read all of the horror stories on the patent blogs about 'prosecution-from-hell' applications.

Still, knowing, without a doubt, that you've reached the correct conclusion simply is not possible when allowing an application; only when writing up a rejection can you really know that you've gotten it right.

The PTO recently posted a beta version of a new web page.

I haven't had a whole lot of time to peruse it, but I've gotta say, it seems to be quite an improvement over the current one, which is little more than a list of disorganized links. Not perfect, but certainly much improved.

You can go here to submit feedback and suggestions for the new website.

Q. Todd Dickenson, the once and (perhaps) future Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, participated in a panel discussion titled "A Model Patent Office for the Future -- Promoting and Protecting Investments in Innovation" at the BIO International Convention.


Q. Todd was giving his thoughts on some of the most pressing problems at the PTO, and his view on how they might be best addressed. His comments come across as pretty much the next best thing to a candidate's stump speech.

I must say, I liked what I heard (or at least what the coverage says I would have heard had I been there).


He proposed a number of reforms at the Office, including "changes in Office leadership, the count system, examination time allotments and examiner pay, enhanced worksharing, an end to fee diversion, and deferred examination".

Also prominently mentioned was the fact that "rulemaking transparency and attempts to engage stakeholders in the process would be critical to the success of any future rulemaking". He also addressed the subjects of fee diversion and deferred examination. Music to my ears.

[Not that the proposed rules defining limits to continuations and claims, as wrong-headed as they were, didn't have any benefits; I've been seeing a whole lot of applications with 3 independent/20 total claims lately. A nice break from the number of claims I'd grown used to seeing.]


He also made the points that "the count system, by which the Office measures examiner (and supervisor) performance, was in need of an update", and that "the amount of time allotted for examination, which he said ranged from 18-36 hours per application, was also in need of an update".

These changes would certainly not be cheap to implement, but are well worth some serious consideration.


You can read the details at PatentDocs.