USPTO’s New Examiner Count System Go Into Effect

One of the top agenda items when David Kappos took over as the new Director of the United States Patent and Trademark Office was to revise the examiner count system, something that everyone in the industry knew needed to be done.  The now old count system was leading to gaming of the system (by some) and providing incentives in the wrong places. On September 30, 2009, the USPTO announced that significant changes to the examiner count system had been collectively agreed to by management and the union. These changes took effect last week and could usher in a new era of incentives that lead to patent examiners having the appropriate incentive to issue patents when there is deemed to be at least some allowable subject matter presented in a patent application. According to Director Kappos, the USPTO is “confident the new count system will encourage quicker resolution of issues and lead to more efficient examination of patent applications.”

As industry insiders know, the count system is the methodology for determining the amount of time in which a patent examiner is expected to complete a patent examination and the credit that is given for each stage of an examination. The changes were the result of negotiations between the Patent Office Professional Association (POPA), the union that represents patent examiners, and USPTO management. The new count system seems to place emphasis on complete and thorough initial examination, and even provides incentive for examiners to issue patent applications early in the process. Examiners are also given up to 1 hour of non-examination time to initiate an interview with the applicant or the applicant’s representative, and to write up an interview summary. Given that patent examiners will receive more credit under the new count system for disposals without need for a Final Rejection, it seems reasonable to anticipate that when there is allowable subject matter present in an application at least some examiners will find it in their own best interest to work with an applicant to get a patent issued quickly. Time will tell, but it does seem that an appropriate balance has been struck.

The image below is taken from the power point presentation put together to explain the September 30, 2009 agreement internally to the patent examining corps.  What is labeled “Current” is now the old count system, and what is labeled “Proposed” is what went into effect last week.

As you can see, patent examiners will face diminishing returns by continuing to force unnecessary RCE filings.  It is also worth noting that after a First Action on the Merits the patent examiner can achieve the .75 disposal credit without issuing a Final Rejection, which would seem most likely to occur when there is a patent issued.  Thus, it seems to me at least looking at the count system on paper that it is fair to say that this agreement seeks to put the emphasis back on granting patents and away from the reject, reject, reject mentality that took hold in the office post second-pair of eyes review.

The USPTO being back in the business of granting patents seems to be bolstered by the attempts to remove what I will call the patentability penalty (see image below).  As we all know, rightly or wrongly, there has been a perception by many patent examiners over the 2005-2009 time frame (at least) that the Patent Office was defining quality with respect to whether patents issued that should have been denied, not caring about whether patents that should have issued were finally rejected and forced to be abandoned or file unnecessary RCEs.  From what I understand, it is not 100% correct to say the USPTO was not concerned about bad final rejections, but the clear and perhaps overwhelming emphasis was placed on patents that issued, not patents that were finally rejected.  This gave rise to a culture of self preservation, which found many patent examiners simply rejecting anything and everything.  Now, however, a single negative patentability determination cannot be used against an examiner, so perhaps at least some patent examiners will see this along with the count system modifications as ample reason to issue more patents.

As with any new initiative there are great hopes, but the reality is that the proof will be in the result.  So while the implementation of a new count system leads to a great deal of optimism, the truth is that policies and procedures on paper mean nothing if they are not implemented.  I have no doubt that the USPTO management believes this will be extremely positive, so now it is up to the patent examining corps directly, and indirectly (at least initially) to management to make sure that the policies and procedures will be implemented.  I have heard some hearsay about some examiners still having no intention on issuing patents, so we will just have to see.  I am optimistic and have seen the beginnings in a culture shift over the last 10 months or so.

In order to gauge the impact and effectiveness of these changes, the USPTO has launched an online Feedback Channel, which will give the public an opportunity to provide input on the new count system directly to agency officials.  So if you see problems with the count system as it is being applied, including potential gaming of the system, let the USPTO know.

The Feedback Channel also enables the public to comment on two other recently launched initiatives. There is a dedicated channel for comments on the “Project Exchange” pilot program for small entity inventors. This pilot allows small entity inventors to accelerate one application in exchange for abandoning another application (see press release). The third feedback channel is for comments on the “Green Tech” pilot program which allows applicants to accelerate applications in certain green technologies (see press release). According to the USPTO, information on additional USPTO programs will be posted for feedback on a regular basis.


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Join the Discussion

6 comments so far.

  • [Avatar for Current Jr Examiner]
    Current Jr Examiner
    March 5, 2010 10:57 pm

    @patent leather: Yes, first action allowance on a case with no RCEs is a full 2.0 counts.

    One of the important points you missed, Gene, is that along with the new count systems, all examiners across the board have now gotten their hours-per-case requirement increased by no less than 2 hours. The actual amount is a complicated function of how many RCE’s that particular examiner had during the previous fiscal year; the complication is designed to lessen the shock for those examiners that depend a lot on RCEs, with the anticipation that in the coming years, the number of RCEs will decrease and the additional hours will stabilize to slightly more than 2.0.

    Anyway, as to the reactions from examiners. Most junior examiners get most of their counts from first actions in new cases, so the increased FAOM count has been a plus for us. Most of the senior examiners (at least those I’ve talked to) are either positive or accepting of the new system. The biggest complaints have been the decreased disposal count for cases already in progress (any case for which a first action was written before the count system went into effect has only 0.75 counts remaining), and the decrease in counts for abandonments off written restrictions, which go from 1.0 to 0.75. All in all, the POPA membership vote was something like 2/3 in favor of the count system; take into account that examiners who have an axe to grind with management are much more likely to be POPA members that those who do not have axes to grind. So my best guess is that the actual approval rate is likely well above 3/4.

    Finally, mad props to the IT guys who completely revamped the counts systems in a very short amount of time, with the transition going surprising smoothly.

  • [Avatar for Gene Quinn]
    Gene Quinn
    March 5, 2010 06:33 pm

    OCIO Madness-

    I approved the comment, but edited out the name of the person that you mentioned. I can understand your desire to remain nameless, and that is fine, but if you want to remain nameless then I think it only appropriate to remove the name of the person you write to complain about.

    While I cannot vouch for or challenge what you say about OCIO, the fact that you perceive there to be a problem there should be sufficient without naming names.


  • [Avatar for OCIO Madness]
    OCIO Madness
    March 5, 2010 09:31 am

    When will Kappos focus his energy on cleaning up the OCIO? A friend of mine just told me about an incident where a senior manager named ******** is accused of throwing her shoe at contractors. She also told me that **** called them her “bitches”. A letter to Kappos has been circulating around OCIO threatning to go to the media and congress over all of this stuff. Is the OCIO really that messed up? Kappos needs to shake up the management structure within OCIO. He can start by getting rid of ******, her immediate supervisor and the CIO. Kappos needs to put an end to what a laughing stock this shop has become!

  • [Avatar for Kenny]
    February 28, 2010 04:59 pm

    An Examiner’s take here:

    Compact prosecution seems to be the goal of this new system with cooperation coming from both the Examiners and the Applicants. Less credit is given to the Examiner for working on RCE’s. However, when an RCE is filed, it now goes to the Examiners Special New docket as opposed to its Amended docket.

    The difference in this docketing practice is huge as I’ll point out here.

    Amendments: Examiners are given 2 months to work on an Amendment once it is docketed to them (usually very shortly after it is filed). So the Applicant can expect a response roughly 2-3 months after filing an amendment (which under the old system included RCE’s)

    Special New: These cases are Divisionals, CIP’s, Continuations, and now RCE’s. It is only required that the examiner work on their oldest new case every 2 bi-weeks (~1 month).

    In the beginning I don’t see the turn-around for RCE’s being much worse than the old system. However, a few months down the line as the Examiner’s have been receiving more and more RCE’s their Special New docket can be accumulating a large amount of RCE’s (along with Continuations), and it could be many months before they are looked at by the Examiner. Thus possibly prompting Applicants to buy into the compact prosecution mantra as well.

    The biggest backlash seems to be coming from Examiners that rely heavily on RCE’s to make their production. I think some Examiners are just dragging their feet being reluctant to any type of change, you’ll have people like that in every facet of life.

    Overall,I think it will benefit a majority of Examiners and after some time the naysayers will begin to see that.

  • [Avatar for Gene Quinn]
    Gene Quinn
    February 27, 2010 03:02 pm

    Patent Leather-

    I think a first action allowance would be worth both 2 counts under the old and under the new. The major change here seems to be that an additional .25 is given to the examiner for a FAOM under the new rules, and there seems to be an incentive to work with the applicant between FAOM and final disposition. So for those who are interested in streamlining 1 hour before the FAOM spent talking to the attorney/applicant could and should lead to a more meaningful FAOM, which in many instances could result in a workout without the need for a Final Rejection. So it seems that the new count system will really work in favor of those examiners who see their job as working to find allowable matter and get patents issued. It will make it more easy for them to reach their production goals, and as a result it should make it easier to achieve the 110%, 120% and 130% bonuses. This will be critical to dig into the backlog. From what I hear one of the big reasons things got out of control was that many examiners stopped striving for the 110%, 120% and 130% awards/bonuses because the more they did the more it could hurt them personally in terms of review/advancement. Getting back to a situation where conscientious examiners want to award patents where they are due and strive to blow past their production goals will be what meaningfully cuts into the backlog far more than hiring newbies, although hiring is essential if you are ever going to get to a point where examiners have the critical couple years of experience to really meaningfully contribute to work without needing so much supervision.

    I am anxious to hear feedback from examiners as well.


  • [Avatar for patent leather]
    patent leather
    February 27, 2010 01:23 am

    Gene, this is great info, thanks. Understanding the examiner count system is critical to being a successful prosecutor.

    Am I correct in that under both the old and new systems, a first action allowance is 2 counts?

    The one issue I see with this is under the new docketing procedures which now put RCEs in the examiner’s “special docket”, if the incentive to pick up RCEs is less than a new application, the applicant could be waiting years before his RCE is picked up. I have some filed now that I dread will be sitting for a long, long time.

    I’m also not convinced this will raise the allowance rate. Under the new system, the examiner gets .25 for writing a final rejection, while under the old system the examiner got nothing. Thus, under the old system the examiner could write a final rejection and get 0 counts (and have to WAIT to see what happens) or issue an allowance and immediately get 1. Apparently, the examiners must have been so afraid of the “second set of eyes” and quality control that they would issue so many finals even for no counts. There is also still plenty of room for “gaming” in the new structure. So for a first RCE, the examiner gets 1.75 (vs 2) total counts (assuming a disposal on the RCE), but RCEs are typically so much easier to examiner than a new application.

    I’m curious what the examiners think of the new system. Any examiners around?