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Hard Counts, Easy Counts, and the New Rules

Examiners are graded on the number of applications they process. Each time an application is taken up for examination, they get credit for that, called a 'count'. When that application reaches some final resolution, either through abandonment, allowance, or appeal, the examiner gets a second count. (For anything that happens between those two events, the examiner gets no count.)

Not all counts are created equal. Some counts are easy, and some are hard. In general, the hard count is the first action on the merits. Any count after that is what I would call, to varying degrees, easy.

For anyone who knows even a little about the patenting process, the reasons for this should be apparent.

In the course of producing a FAOM, an examiner must (1) read the specification and understand the disclosed (note, I did not say 'claimed') invention, perform a thorough prior art search, and write up the action. This takes time.

In the majority of cases, this first action takes longer than the amount of time I'm allocated for a single count. Depending upon the complexity of the application and the amount of relevant prior art available, I'll sometimes spend twice what I'm allocated on the first action. Sometimes even longer.

Well, how the heck can I maintain my production doing that? Two things allow me to maintain my production.

First of all, if I've done my search correctly, I know that I've identified the bulk of relevant prior art that's readily available. This means that when the applicant amends the claims, I should have the art that I need to handle it, and usually do not need to perform a new search. That minimizes the amount of time I spend on my 'no-count' actions.

The second thing is the easy counts. Abandonments (both final abandonments and abandonments as part of an RCE) are essentially free counts. Allowances usually take a minimal amount of time to write up. The first actions of RCEs should take no more time than any other amendment, but I get the bonus of a count for it. First actions of continuations, while of course requiring a search, don't require as much time to do because I am already familiar with the invention, and have already performed a search on the disclosed invention.

New examiners do not get any easy counts. This means that they must cut off their search when the production timer goes off. They pay for that down the line when they sometimes must do additional searching on subsequent actions, but they have no choice.

Examiners who have been in the Office long enough to have a well-established docket, though, get a fair number of easy counts. Under the current production system, it is the easy counts which make the hard counts possible.

Which brings me to the new continuations rules.

I'm not going to bother going into the details. Suffice it say that, as we all know, there are going to be fewer RCEs and continuations filed in the future (assuming that the challenges to the new rules are unsuccessful).

Fewer RCEs and continuations means fewer easy counts. This will certainly make it tougher to make up the time spent doing those hard counts.

Full post as published by Just a Patent Examiner on October 20, 2007 (boomark / email).