Imagine a federal taxation scheme where your taxes are determined by an IRS agent, who is empowered to use “common sense” in setting your taxes at a “fair” rate. Or a Transportation Security Authority where security guards are allowed to admit or exclude passengers from flights based on whether or not they look “suspicious.” Or a Bureau of Motor Vehicles where your driving rights are issued or withheld based on whether or not the officer thinks you’re a “safe” driver.
Government agencies that allocate legal rights are never based on such discretionary mandates, for a large number of plain and obvious reasons. Yet, recent trends in patent law have elevated examiners’ discretion to dominate the formerly rule-based, evidentiary process – such that the outcome is primarily driven by the personal philosophy and temperament of the patent examiner.
Many practitioners have noted the existence of this trend, and some of its effects. The purpose of this article is to explore the sources of such discretion – the particular opportunities in the examination process that are amenable to arbitrary decisions – and that are routinely exploited to compel the outcome toward the examiner’s desired result.
Continue reading The Power of the Pen: The Role of Examiners’ Discretion in Patent Examination