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: Just a Patent Examiner

The Count System Version 2.0

The Office on Wednesday afternoon notified the examining corps of the details of their proposal for a new count system.

The Broad Brush

The new count system includes the following elements:

• Count System Changes and More Time for Examiners: 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 diminishing credits for RCEs and providing consistent credits for transferred or inherited amendments.
  
• Process Changes: These will increase work credit certainty for examiners, increase fairness to applicants, and balance the load on IT systems.
  
• Improved Working Conditions: The proposal includes measures that will help examiners to do a high quality first action, and shift resources from a focus on examiner recertification to front-end quality improvements.
  

The Office believes that this will provide the following benefits to examiners, the agency and patent filers:

• More time to search and identify patentable subject matter earlier in prosecution
  
• An increase in employee morale and a decrease in attrition
  
• A decrease in the number of actions per disposal, the need for rework, and he need for RCEs (though RCEs are certainly available for those filers who need them, and examiners will still receive credit for examining RCEs)
  
• An increase in the number of examiner-initiated interviews, which will resolve issues more quickly and increase applicant satisfaction
  

The task force expects the improvements in overall efficiency caused by getting to examination more quickly will offset the increased time provided for examination. And, importantly, they expect improved quality by providing examiners with more time up front in the first office action to do a thorough search and examination. The task force is prepared to propose adjustments as warranted should the changes not yield the anticipated results.

Over the long term, the Office believes the proposed changes will promote quality examination and set a foundation for pendency improvements.

The Details

-- Counts

The Office has proposed revising the distribution of counts awarded to examiners over the course of examination. Under the old system, examiners received one count each for a first action (either initial or after RCE) and one count for a disposal either through allowance, abandonment or appeal. One cycle of first action through disposal is known as a balanced disposal, or BD. Two counts per BD, no matter how many RCEs have been filed, forever.

Under the proposed new system, examiners will receive 1.25 counts for the first action, .25 counts for a final rejection, and .5 of a count for the disposal, but only for the initial first action. The first action after the first RCE will net an examiner 1 count, and for any subsequent first actions, .75 of a count. In a nutshell, examiners will continue to get their 2 counts for the initial BD, but only 1.75 for the second BD (first RCE), and 1.5 counts for any additional BDs (all additional RCEs).

The revisions to the counts are a step in the right direction. Rewards are scaled back for RCE work, as they should be. I do like getting a bit of credit for the Final rejections, although it isn't really necessary. Still, it will help minimize those pay periods where you work on lots of amendments and get very few counts for it, but things always even out in the long run anyway.

My guess is that the distribution may need some more tweaking; maybe weigh the initial first action even more heavily, and perhaps even adding additional counts for the first BD and taking some away for the RCE BDs.

-- Hours per BD

The Office proposes awarding examiners additional time to work on each application; up to two hours per BD, or one additional hour per count. There is also a contingency in place for examiners with more established dockets who work on more RCEs who might end up losing time in the end, because of the decrease in counts for work done on older applications. The contingency is meant to ensure that at worst, each examiner will be given at least one additional hour per BD under the new system.

Well, who's going to argue with more time? It is nice that they tried to address the situation many more senior examiners are in whereby the counts they receive for RCEs provide them the time required to do thorough initial first actions. Of course, I think they could have addressed that problem more easily (and simply) by making the initial first action worth more counts and pushed the total counts for the initial BD above 2 (with perhaps a corresponding decrease in counts for the subsequent BDs), instead of trying to stick with the current 2 counts for the first BD. The first BD is almost always the one that takes the most time to prepare (by far), because of the time required for the initial first action.

The new system as proposed requires the office to calculate a personalized hours/BD number for each examiner, based on the distribution of initial first actions and RCE first actions they completed in FY09. That seems like a whole lot of work.

-- Credit for Inherited Applications

There are provisions to ensure that examiners are given a standardized number of counts when they inherit an application in the middle of prosecution.

This was addressed in the past by talking to your SPE and having them allow you to take a count's worth of non-examining time to do your first action. Either way, they're compensating you for performing work when the first action count has already been taken by another examiner for that application. You still need to do lots of the things that you'd need to do if you were performing the first action - read the application, review all of the prior art of record, and usually doing more searching. That all takes time, and when it's a second action, you're not getting sufficient counts to offset that time.

It'll be interesting to see how this works, but for now this seems like they're just formalizing the compensation that was previously done on a case-by-case and SPE-by-SPE basis in the past.

-- Examiner Initiated Interviews

Examiners will now be granted one hour of non-examining time for an examiner-initiated interview. Previously, examiners only got this time for applicant-initiated interviews.

This is nice. Like when they started allowing examiners to take one hour for telephone interviews (previously examiners were given non-examining time only for in-person interviews, as if they took any less time than those over the phone.)

As long as the interview is substantive, this should help encourage examiners to get on the phone and more rapidly advance prosecution. Once again, I'll be interested in what if anything they do to ensure that the examiner-initiated interviews are in fact substantive.

-- Recertification Program

This program, which more or less required primary examiners to pass a 6 month long review period every three years in order to maintain their signatory authority, is being discontinued.

Definitely a plus. This program was just one more thing to take up people's time in the Office. This program was akin to the process gone through when the primary initially was granted signatory authority. Lots of time, lots of effort. I'm assuming that the SPEs doing all this reviewing have got better things to do with their time. Let the regular in-process and allowance reviews deal with bad work.

-- Counting Cases

There are new requirements for when examiners must turn in their work for review. This tries to address the problem that many SPEs had on Monday mornings, when they are forced to review many many Office actions that have been submitted by examiners working over the weekend. The actions need to be reviewed and submitted for counting by 10:30 in most cases.

It also established a new policy that will credit an examiner for their actions when they turn them in for review, not when they are ultimately approved and submitted for counting. This addresses the situation where an action which is under deadline is turned for review before the deadline, but for some reason is not counted until after the deadline. Also, corrections must be turned in within two weeks.

I've seen how bogged down the SPEs can get on Monday mornings, especially when they've got a large art unit. Taking steps to encourage examiners to stop back-loading their bi-weeks can only be a good thing.

I can understand crediting an examiner for completing an action when they turn it in. I remember how tough it was to be waiting around for your SPE or primary to get around to reviewing an action that is under deadline.

Still, what's to keep examiners from just turning in a crap action that they know will be returned by the reviewer, so that they can make their deadline and then go back after the fact and complete the action correctly? Just another detail I'll be interested in hearing about.

-- Patentability Determination

These new rules establish a policy where an examiner won't face any adverse consequences due to a single clear error in patentability determination. Since only examiners with signatory authority have patentability determination as part of their PAP, this only affects primaries.

This strikes me as a bone being thrown to POPA. It probably just formalizes what was previously done through the union initiating some grievance process.

-- Hoteling

There are provisions to allow examiners to remain in the hoteling program while they on probation (having received a rating of less than Fully Successful).

Ditto above comment.

-- Docket Management

The already established workflow policy of working on your oldest cases first is reiterated.

Also, RCEs will now be placed on an examiner's Special New docket, instead of their Amended docket as before.

The requirement that examiners work on their oldest cases first has always been there. The problem is that its enforcement has always been very arbitrary. Some TCs or art units are required to adhere to the rule, while others never have. Enforcing this requirement across the entire Office should ensure that tough applications are not put off.

The new RCE docketing procedure, I think, may well have a very significant impact on the prosecution of applications by attorneys.

Currently, an RCE will be placed on an examiner's Amended docket, requiring them to take action within 2 months.

The new provision treats RCE just like any other continuation or divisional application, placing them on the examiner's Special New docket. This means that there is no fixed deadline for preparing the next action. They will be, of course, subject to the requirement that the oldest new application be worked on every 2 bi-weeks, but that only requires the examiner to do one case from their Special New docket each month. For examiners with large dockets, those RCEs could definitely back up on their Special New docket.

For instance, say I average 5 RCEs each quarter. Under the new rules, I'm only required to work on 3 per quarter. You see where I'm going here; this provision could serve as a big disincentive to filing RCEs, because you're going to have to wait longer for your RCE to be examined (although with the backlog at the BPAI, appeal might be an even less attractive alternative).

The provision will certainly serve to address first action pendency, because it will reduce the number of applications on an examiner's Amended docket, thereby giving them more time to work on new applications. It's possible that some examiners may continue to work on their RCEs as they come in, since they're still getting counts for the first action (as they would for any continuation or divisional). The point is, they are no longer required to send out that first action after RCE within 2 months.

This provision may also serve to put a fire under the applicant to push more aggressively for earlier allowance, through more substantive amending and/or requesting more interviews to get the issues identified and addressed earlier in prosecution. The RCE currently seems like such a relatively 'pain-free' way for the applicant to continue prosecution (if you can afford the cost, that is), that for some arts it seems to have become almost the default procedure. By moving RCEs back to the end of the line, this provision may serve to make going the RCE route less painless.

This is a significant change.

-- Production Awards

Examiners will now be able to raise their bonuses for every 5% above 110%, where previously it was only every 10%. The amount of the bonus hasn't changed. The cap is now at 135% (7% bonus), instead of 130% (6% bonus).

If I recall correctly, this was proposed about 5 years ago in one of the studies of how to improve the Office's operations (GAO, I believe). This will be a good thing. Currently, if you're at, say, 113%, an examiner is likely to coast at the end of the year, because they've got a 3% cushion (over the 110% award), and there's very little likelihood that they'd be able to jump 7% in production at the very end of the year. But, one might be able to make that 2% jump. The new system gives examiners the incentive to do just that.

So, is this all good? On the whole, I'd say I'm cautiously optimistic. I like that the plan is to make this an iterative process, so that the details can be adjusted if things don't work out as expected or hoped.

There will be briefings next week for the examiners, to explain the system in more detail, and I'll be looking forward to hearing those details. There are some provisions on which I'm a bit fuzzy.

Particularly, I'm wondering about the implementation details. How to transition an examiner's docket to the new system without making a very large initial impact on their production.

The problem with which I'm concerned involves that initial implementation.

For any case that's currently on my Rejected or Amended docket, I've already been awarded my 1 count for the FAOM. However, I'm no longer going to be awarded 1 count for the disposal, I'm going to get only .75 (.25 for the final, .5 for the disposal). For anything that's already been made final, I'm only going to get .5 of a count.

Simply by implementing the new system, I've just lost counts for the next FY. For each finally rejected application, I've lost .5 of a count. For non-finals, I've lost .25 of a count. Granted, for applications having advanced past the RCE stage, the impact will be less, but there will still be many counts lost.

The proposed plan seems to have taken many subtle details into account, so I assume they've got a plan to address this one, too. My best guess is that they may treat everyone's docket as if they just inherited it from another examiner, and award initial counts as detailed above. Not a perfect solution, but it will reduce the number of counts lost, anyway.

So, a new count system. On its face, it seems like a good first step. It should be an interesting next few quarters, seeing just how this all shakes out.

Full post as published by Just a Patent Examiner on October 02, 2009 (boomark / email).