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Study: Experienced Examiners Allow More, Cite Less

By Peter Zura

In what is sure to be an oft-cited paper in the "Great Patent Reform Debate", professors Mark Lemley and Bhaven Sampat have brandished their magnifying glasses on examiner processes at the USPTO to see if certain examiner characteristics had statistical effects on the examination process. Titled "Examiner Characteristics and the Patent Grant Rate," the paper finds that, with regard to PTO "patent quality," the effect of Office experience may be overblown, and more answers may be found in the HR department than on the Senate floor:

[W]e show that there are important differences across patent examiners, and that these relate to the most important decision made by the USPTO: whether or not to grant a patent. In particular we find that examiners differ in significant and important ways in their experience and the depth of their prior art searching, and that these examiner characteristics have qualitatively and statistically significant impacts on whether a patent application is granted.

The results are not encouraging as a public policy matter, because they suggest that the decision to allow or reject a patent application may not be driven by the merits of that application, but rather by the luck of the draw. At the same time, they suggest that human resource policies and incentive structures at the USPTO could affect patent grant rates, an important finding amidst growing concern that it grants too many "low quality'' patents and is in need of significant reform

With regard to examiner experience, the paper pulls no punches:

[W]e find that more experienced examiners are significantly more likely to grant, and, conditional on experience, examiners that conduct more intensive prior art searches are least likely to grant.

Taken alone, the result that more senior examiners are more likely to grant could suggest that they can more quickly figure out what is patentable in an application. But our data on prior art citation patterns do not support that conclusion. The finding that more senior examiners systematically cite less prior art reinforces the inference that senior examiners are doing less work, rather than that they are merely getting it right more often than junior examiners. And the fact that seniority is correlated with more first--action allowances is also inconsistent with the idea that more experienced examiners are simply negotiating the applicant to a narrower, patentable outcome; in the first--action allowance cases there is no negotiation at all . . . The tenure system, the count system, and examiner recruitment and retention policies should be a more prominent part of current patent reform deliberations.

And, lest anyone think this is the primary problem with software patents and the USPTO, the paper provides the following:

[T]he computer industry had by far the highest percentage of new examiners: more
than 60 percent of examiners in that art unit had less than a year of experience, compared with less than 20 percent in mechanics and chemistry. In our prior paper, we found that the computer industry had a surprisingly low grant rate: lower than any other industry. At least some of that result may be explained by the prevalence of new examiners in that industry.

Read/download a copy of the paper here.

Full post as published by Two-Seventy-One Patent Blog on January 28, 2009 (boomark / email).