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The Challenges of U.S. Patent Examination

The Challenges of U.S. Patent Examination published on

I’d like to begin my commentary about the patent office with an overarching observation – one that I intend to emphasize throughout this weblog:

On the whole, U.S. patent examiners are good people doing good work under difficult circumstances.

From the outside (i.e., what practitioners learn in law school), patent examination is a simple and straightforward process:

  1. Read the application.
  2. Search for related references.
  3. Write up an office action stating a decision and correlating the references with the claims.

In reality, this process is complicated by a host of factors:


Production requirements.

The USPTO’s requirements for examiner productivity (the “production system” or “count system”) are complicated, but the gist is: Depending on their experience and art unit, examiners have somewhere between 15 and 25 hours to take each application from filing (or RCE) to a “balanced disposal,” i.e., an allowance, abandonment, or final office action.

That seems like a large block of time, but it’s stretched to cover quite a lot of work for every round of patent prosecution:

  • Reviewing the application and claims (either the originally filed application, or presented in a Request for Continued Examination (RCE) with new arguments)
  • Performing an initial search
  • Determining what to do with the application
  • Writing up a non-final office action
  • Reviewing the arguments in a reply to the non-final office action
  • Conducting a follow-up search
  • Determining, again, what to do with the application
  • Preparing a final office action or notice of allowance

…as well as occasional tasks for some applications:

  • Researching the technology to understand the disclosure
  • Discussing the case with a supervisor or primary examiner
  • Issuing more than one non-final office action
  • Considering and writing up restriction requirements
  • Interviews: scheduling, preparation (reviewing the case and reading the agenda), conducting the interview, writing up an interview summary, and possibly issuing an advisory action
  • Consulting with a quality assurance specialist (QAS) for the art unit to resolve 101 issues
  • Engaging in appeal issues

The work for each response is considerable – not even considering the typical inefficiencies of office environments (routine meetings, training, IT down time, etc.)

Complicated language in specifications and claims.

“In an exemplary embodiment, the type instance manager evaluates the protocol request by correlating the policy structure with the data access object instances in accordance with the management controller interface.”

That’s fairly standard language for a patent specification, and a typical one runs around 30 pages.

Claim language is even more complicated, due to a vast range of considerations. Linguistic acrobatics like “the respective at least one object selected from an object set comprising:…” are common. Also, in many patent claims with 100+ words, the novel aspect is encapsulated in a short phrase – maybe only a few words – and it’s up to the examiner to figure out which words those are.

Making sense of an application is an exceptionally difficult exercise. Doing it under time pressure is even more daunting.

Limited search resources.

After digesting the complicated language of a patent application, the examiner’s next step is to conduct the search with the USPTO’s search tools – which are mostly centered on other patents and applications.

If reading one patent is difficult enough, consider the task of reading dozens of patents, written by different drafters and companies, in order to determine what the state of the art was several years ago.

Sprawling technology areas.

Of course, it makes sense for each application to be handled by an examiner who’s already familiar with that field of technology. To this end, the USPTO utilizes some classification systems to sort patent applications into technology buckets, and to assign each art unit to the examination of a small number of buckets of closely related technologies.

Reality is messier:

  • Technologies often involve multiple technology areas. Consider: “a network communication protocol with integrated encryption.” Should that patent application be routed to “encryption” or “network communication?” A thorough review of the specification may reveal a clearly correct answer, but it might be difficult to discern from cursory review by a patent classification specialist.

  • Much classification is performed based on keywords from the title and abstract. While understandable due to the volume of the task, this process occasionally produce inaccurate results. An examiner who typically reviews physical memory devices can be assigned a high-level memory management technology, simply because the abstract mentioned that the invention might be utilized for DVDs.

  • Load-balancing among art units often requires application re-routing. It’s my understanding that the “Clearing the Oldest Patent Applications” (“COPA”) program exacerbated this re-routing, with applications reassigned to art units and examiners with very little knowledge of the relevant field of art.

This mis-categorization puts the examiner at a significant disadvantage: they do not readily understand the context of the invention, the state of art of the field, or the teachings of the references.

Shifting legal and technical standards.

The field of intellectual property law is extraordinarily dynamic. Examiners are expected to issue opinions that comply with:

  • Title 35 of the United States Code (35 USC) and Title 37 of the Code of Federal Regulations (37 CFR), as well as various changes such as the America Invents Act (AIA) and the American Innovators for Patent Reform (AIPR) Act
  • The Manual of Patent Examining Procedure (MPEP)
  • Advisory articles posted in the Federal Register
  • Rapidly fluctuating policy within the patent office and the examiner’s art unit to reflect decisions by federal courts and the Patent Trial and Appeal Board (PTAB)

Reviewing and making sense of this intricate and occasionally incoherent body of patent law and policy – in addition to the rapidly advancing state of the art in their technology field – is somewhere between “full-time job” and “exercise in futility.”

Oversight.

The patent examination process of years past was much more deferential to examiners. According to one long-time practitioner, office actions used to specify little more than a checkbox reading: “claims rejected,” and a string of serial numbers of patents and patent applications that the examiner deemed to cover the claimed invention.

Today, patent examiners’ decisions are reviewable by an army of superiors: a primary examiner, the supervising patent examiner, the quality assurance specialist (QAS) for the art unit, the director of the art unit, the Ombudsman’s Office, the Office of Patent Quality Assurance (OPQA), administrative patent judges with the Patent Trial and Appeal Board, and judges with a circuit court or the CAFC. There’s also the court of public opinion: the ever-present fear of being on the end of a “look at this ridiculous patent!” internet controversy (about which, more later).

Examiners are compelled not only to write office actions that will satisfy this body of superiors, but to bridge differences of opinion among them about the novelty of the technology or the interpretation of a claim.


Given all of these constraints, I have a generally favorable view of the proficiency of examiners at the U.S. Patent & Trademark Office. Many examiners – in fact, a steadily increasing proportion – are technically knowledgeable, well-informed of patent law, fair, professional, cooperative, and conscientious about their cases. And on the whole, my work with the patent examining corps is enjoyable.

The rest of this weblog will describe (in generality) my experiences with the others, and my strategies for pursuing applicants’ interests before them.