David Kappos, Director of the US Patent and Trademark Office, made a series of proposals to bring change to the examiner count system – the process for determining the time a patent examiner has to complete a patent examination and how much credit is given for each stage of an examination.
The proposal was developed by a task force comprised of senior managers in the Patents organization and leadership of the Patent Office Professional Association (POPA), the union that represents patent examiners.
The proposed changes are designed to:
- incentivizing quality work at the beginning of the examination process;
- encourage examiners to identify allowable subject matter earlier in the examination process;
- rebalance incentives both internally and externally to decrease rework; and
- increase examiner morale and reduce attrition.
The full proposal, with all its gory details, is available here.
The proposal provides incentives to encourage examiners to do a high-quality first action, and shifts resources from a focus on examiner recertification to front-end quality improvements. The proposed changes will give examiners more time overall, more time for a first action on the merits, and time for examiner-initiated interviews, while decreasing credits on requests for continued examination (RCEs) and providing consistent credits for transferred or inherited amendments. RCEs are still available and examiners will continue to be given credit for examining RCEs.
When patent examiners review patent applications to determine if a patent is warranted, the examiners must meet two specific milestones in the patent examination process: first actions and disposals.
First action: Patent examiners notify applicants about the patentability of their invention through a first action after determining if the invention is new and useful, as determined through an investigation of information related to the subject matter of the patent application.
Disposal: Patent examiners dispose of a patent application by determining, among other things, if a patent will be granted—called allowance—or not.
Patent examiners receive credit, called counts, for each first action and disposal, and are assigned production goals (also known as quotas) on the basis of the number of production units—composed of two counts—they are expected to achieve in a 2-week period. The counts in a production unit may be any combination of first actions and disposals.
The production goals that are used to measure patent examiner performance are based on the same assumptions that USPTO established in the 1970s. At that time, the agency set production goals in the belief that it should take a patent examiner a certain amount of time to review a patent application and achieve two counts based on the patent examiner’s experience (as determined by the patent examiner’s position in the agency) and the type of patent application reviewed.
As a result, these goals varied depending upon the patent examiner’s position in the federal government’s general schedule (GS) pay scale and the technology center in which the patent examiner works. In the past, a GS-12 patent examiner working on data processing applications is expected to achieve two counts in 31.6 hours, whereas a GS-12 patent examiner working on plastic molding applications is expected to do so in 20.1 hours. In contrast, GS-7 patent examiners working on these two types of applications are expected to achieve two counts in 45.1 and 28.7 hours, respectively.
