Patent Examiners Are People Too!

As a patent attorney living in Austin, Texas, I have to deal with patent examiners at the USPTO when responding to office actions. My experiences with patent examiners at the USPTO are typically positive, although many of my patent attorney colleagues sometimes disagree.

I do not view patent examiners as the enemy; they just have different goals then a patent attorney working for a client. The goals of patent examiners at the USPTO are to limit the claim scope of patent applications, increase a number of “points” they receive, and create patent history estoppel. These goals can be obtained by issuing more office actions! This is the opposite of what I desire to produce for my clients.

For start-up companies that may not know how patent examiners get paid/graded at work, patent examiners are required to obtain a certain number of “points” per quarter. Different number of points are required for examiners in different art units (technology areas), and different number of points are given to examiners for different actions completed. For example, an examiner is given a number of points for issuing a non-final office action, having a patent application go abandoned, having a patent application be issued, conducting an examiner interview, etc. As such, as long as a patent examiner is issuing valid office actions, it is in their best interest to do so. This is because after issuing several office actions, they probably know the technology better and do not have to spend that much time studying the application. It is also in their best interest to not issue invalid or unsupported office actions, because then they get no points.

For the above reasons, it is likely that the examiner has merit, at least based on their understanding of an invention, in issuing a rejection in an office action. It should be noted that examiners are not given unlimited time to understand the scope of an application and/or the claims. Therefore, the first office action in patent application may be slightly off, or the examiner may use a very expansive view of “broadest reasonable interpretation” of the art. Therefore, in many instances it is helpful for both the examiner and patent attorneys to conduct examiner interviews to discuss the merits of the application. During these interviews, the patent attorney can explain the invention to the examiner (saving the examiner time), and the examiner can explain why the cited art was used in a rejection. This knowledge allows the patent attorney to save their clients time and money by limiting the amount of office actions issued in cases.

By | 2013-09-17T16:50:42+00:00 September 17th, 2013|Blog|Comments Off on Patent Examiners Are People Too!