just_n_examiner (just_n_examiner) wrote,


It would seem to be self evident that ensuring the high quality of issued patents is of benefit to everybody.

The Office has a number of mechanisms in place to ensure the high quality of patents. Among them are the Office of Patent Quality Assurance (OPQA), and the second pair of eyes review.

To the examining corps (or at least to me), the details of how these programs work are not completely clear. I've never seen any official documentation of how the programs work, and after spending about 20 minutes one evening last week [again; this is not the first time I've tried to do this], I've given up trying to find any concrete information on the USPTO website about how the programs work.

In general, the programs both perform a review of an examiner's action. If they find a problem, the action is returned to the examiner so that whatever problems were identified can be fixed.

One commonly held (but mistaken) belief about the programs is that an examiner's allowance can be indiscriminately returned with the vague guidance that the claims are not allowable, and a new rejection must be prepared.

The fact of the matter is that if an allowance is returned (and I can attest to this, because I have first-hand knowledge), the reviewer attaches prior art that they believe is sufficient to reject the claims. Even when this happens, if the examiner believes that the reviewer is mistaken, they can make their case to their SPE and OPQA. It's a pain to have to do, and you're not getting any other time to do this, but if you think it is warranted, you can in effect tell the reviewer to 'get stuffed'. (Of course, you need to be able to convince your supervisors that you are correct.)

Another commonly held perception is that the Office's QA programs stress reviews of allowances, and rarely review rejections. Since to my [minimal] knowledge, OPQA reviews only a few rejections, and second pair of eyes reviews only allowances and no rejections, this does appear to currently be the case. I've read speculation that this has contributed to examiners' reluctance to allow applications, since the allowance are subject to review, while rejections aren't (or are much less likely to).

The rationale for stressing the review of allowances over rejections may well be the belief that a bad rejection can always be fixed later in prosecution, while a bad allowance cannot. More to the point, a bad allowance has the potential to embarrass the Office. [There is a reason why examiners are told to make sure they don't 'make the papers' based on their allowed cases...]

Of course, in reality, poor quality rejections are just as bad as poor quality allowances; they cost the inventors time and money, and contribute to the Office's backlog.

Besides, bad allowances can always be reexamined. The money spent and time lost by inventors on bad rejections can never be recouped (particularly when the patent never issues).

Gene Quinn, over at IPWatchdog recently wrote about the Office's QA procedures, and a rumor he'd heard regarding some upcoming (and encouraging, if true) changes that may be coming down the pike.

Apparently, or so the rumor says, the Office will be placing more of a focus on using OPQA to increase the quality of Office actions preemptively (i.e., through training), and less emphasis on doing it after the fact (by returning completed actions to the examiner for correction). The original post can be found here.

I found the comments made by 'OPQA Person', who offers a bit of insight into the process followed by OPQA examiners, to be especially enlightening.

Well, Gene followed up after being contacted by the Office and conducting an interview with Peggy Focarino, Acting Commissioner for Patents, regarding the future direction of quality review activities at the Office.

The changes and initiatives discussed offer many reasons for optimism.

Clearly, if an examiner has done their job correctly, there should be no reluctance to allow applications when appropriate. Still, it's no fun to feel like someone is constantly looking over your shoulder, ready to question your decisions, particularly when you've got signatory authority. The new approach sounds like it could go a long way toward alleviating that feeling amongst the corps.

Back when I was in PEIT (the examiners' initial training before the Patent Academy was established), a guest speaker came in to speak about, well, I don't really remember. About working at the PTO in general maybe. One of the points he made still sticks with me. He said that the best job in the entire Office is that of primary examiner. A primary examiner is "his or her own patent office." They have autonomy to make their own decisions regarding patentability without constant being second-guessed.

I agree that the job of primary examiner is still the best one in the Office, but the autonomy hasn't been as great lately as it once was. But who knows, maybe the pendulum is swinging back.
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