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March 19, 2010 by
Filed under: Patent Articles 

By Lisa Velez

The United States Patent and Trademark Office (USPTO) has recently changed the counting system used to track the production of patent Examiners which is now in effect.   The Examiners have a quota system that is used for annual evaluations, retention and bonuses.  The quota system, in general, assigns a set number of hours to each non-provisional patent application for the Examiner’s grade level (or position factor).  The hours also change by technology complexity and, specifically, the higher the grade level (or position factor) of the Examiner, the lower the number of hours provided to the Examiner for a particular patent application.  The total hours for a patent application for an Examiner’s position factor are mapped to two (2) counts.

The hours and count system assigned to a particular patent application was last changed in 1976.  However, over the last 30 plus years, a significant number of domestic patents, foreign patents, literature and other non-published literature are readily available and should be reviewed by the Examiner when making a determination for issuance of a patent application into a US patent.  During this time, technology advancements, the most notable, the World Wide Web (WWW), have made the Examiner’s job both easier and more challenging.  The World Wide Web (WWW) is capable of delivering millions of bytes of data to the desktop computer.  However, the Examiner only has human eyes that do not read at the speed of light.  The WWW can provide the Examiner with infinitely more information that can be reviewed and considered from around the world.  While, technological advancements facilitate the USPTO to produce higher quality patents, the Examiners still needs extra time to thoughtfully consider all the information when making a patenting decision.

The new count system does not increase the number of counts.  Instead, the new count system modifies the distribution of counts to encourage higher quality of examination on the First Action on the Merits (FAOM).  In the old system, the Examiner would get 1 count for the FAOM.  With the new system, the Examiner receives 1.25 counts.  Thus, the Examiner is encouraged to spend more time to prepare the FAOM.  Furthermore, the new count system will slightly increase the number of hours per position factor assigned a patent application.

Another advantage to the Examiners is that a fraction of a count (.25) is provided for a Final Office Action (FOA).  In past, the counts would be distributed at the FAOM and after Allowance or Abandonment.  Now, the total counts appear to be shared somewhat more equitably along the examination process and the related Office Actions.  In the new system, the remaining .75 of a count may be split between the FOA (.25) and an Allowance or Abandonment (.5).  However, if a FOA was not required, the .75 of account would be applied to the Allowance or Abandonment.

The new count system also appears to encourage compact prosecution which generally means determine and identify the existence of patentable subject matter in an application  In the past, the Examiner would get a full two (2) counts for each and every Request for Continued Examination (RCE) stemming from a single patent application instead of the full two (2) counts.  Now, the counts for an RCE’s are incrementally decreased, which is not generally favorable to help the Examiners meet the production quota.  In the new count system, the Examiner would get 1.75 counts for the first RCE and 1.50 counts for a second RCE.  While, the Examiner’s technically should spend less time on a RCE, the overall amount of work burdened on the Examiners is large in consideration of the massive amount of patents both domestic and foreign, literature and non-published literature (such as advertisements on the Internet) that must be considered to evaluate the novelty and/or nonobviousness of an invention.

There are some additional advantages for the Examiners with the new count system in an effort to encourage compact prosecution.  The Examiner may obtain extra time (one hour) to conduct an examiner initiated interview which could be used by the Examiner to negotiate amendments with the patent attorney or agent to place the application in condition for allowance.  The USPTO is encouraging Examiners to identify, if possible, patentable subject matter as early as possible in the patent prosecution process.  The theory may be to allow patent applications quicker so that the overall pendency can be reduced.  For example, if the number of FOAs or other Office Actions after the FAOM can be reduced, the Examiner’s time would be freed to evaluate other applications waiting to be examined on the FAOM.

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