PTO Issues Count System Proposal that Includes Additional Time for Examination

by Mark Malek

On September 30, 2009, Director Kappos issued an update to the Patent Examining Corps and, in it, addressed the way in which Patent Examiners are evaluated for production.  (You find a copy of his propasal here).  Many patent professionals believe that the current count system seems to be one of the problems causing the backlog at the patent office.  The Director’s update represents only a start to solving the bigger problem, but it is, nonetheless, a start.

In the overview, the proposal sets for providing more time for Examiners to review applications, providing time for Examiners to conduct interviews, and diminishing credits that Examiners receive for Requests for Continued Examinations (RCEs).  Of specific interest to me was a quote that I noticed right in the overview: “Reduce Examiner reluctance to allow applications.”  WOW! That seems like a huge step in the right direction to me.  It should certainly feel like a step in the right direction for Applicants.

There has been much debate among patent practitioners that the Examiner Count system breeds inefficiency in the PTO because Examiners are incentivized to issue Final Office Actions in the hopes that an Applicant will file an RCE with a preliminary amendment.  In doing so, the Examiner has just increased the count number involved in dealing with one case.  I cannot blame Examiners for this.  I believe that the rating system under which Examiners are forced to operate dictates this type of behavior.  With the news that the PTO now proposes additional time for Examiners to examine applications, and has decreased the incentive involved in getting an Applicant to file and RCE, maybe pendency times will decrease.

One of the aspects of the proposal that should please most practitioners and Applicants is a program for granting non-examining time for substantive Examiner-initiated interviews.  I believe that so much more can be accomplished in an interview than through the back and forth routine that we play of issuing an Office Action, filing an amendment, issuing a Final Office Action, etc.  A program like this might lead to more efficiency if Examiners and Applicants can address the merits of a case in an interview, and maybe even amend claims to overcome rejections by Examiner’s amendments.

This is not an overnight solution to the pendency issue at the PTO, but it sure is a start.  As indicated in the proposal this can “set the foundation for long-term pendency improvements” and “increase Examiner morale leading to reduced attrition.”  These would be great results and will likely lead to a more efficient PTO.  The proposal is careful to note, however, that potential risks could include an increase in pendency and a decrease in revenue.  My interpretation, however, is that these could be short term risks, whereas the long term results should be more beneficial.  In other words, it is likely that an adjustment to this system will cause initial increased pendency, but it should be clear that taking away most incentives to delay cases and actually providing time to Examiners to examine more efficiently, i.e., conducting interviews, should lead to better results for the patent system as a whole.  Time will tell.