Print

Please login or register.
1 Hour 1 Day 1 Week 1 Month Forever
Login with username, password and session length

[patentatt]

For primaries, I presume that they send out their own final actions, and send out their own advisory actions, without SPE review.

For assistant examiners (i.e. non-primaries), I understand that the SPE has to review and sign/approve a final action.

But what about an advisory action?  Does the SPE have to approve those too?

I get Advisory Actions sometimes with 2 page continuation sheets (1000+ words) elaborating/modifying the grounds of rejections and countering every one of applicant's arguments - usually in a way that is totally incomprehensible.  It doesn't look like SPEs ever review these things.  Am I right?

[mk1023]

Technically an advisory action can only be signed by a primary (see MPEP 1005). So every advisory action for a junior is signed by a SPE. Of course things get rubber stamped all the time. It's a lot easier to rubber stamp an advisory than an allowance.

[JustAnotherExaminer]

For assistant examiners (i.e. non-primaries), I understand that the SPE has to review and sign/approve a final action.

Anyone with FSA can sign a final action on behalf of another examiner.

But what about an advisory action?  Does the SPE have to approve those too?

Same as finals, no.

[patentatt]

For assistant examiners (i.e. non-primaries), I understand that the SPE has to review and sign/approve a final action.

Anyone with FSA can sign a final action on behalf of another examiner.

But what about an advisory action?  Does the SPE have to approve those too?

Same as finals, no.

Is it just me, or are SPEs a lot less likely to agree with the examiner than primaries?

Examiner seem to be annoyed when I ask for a SPE and not a primary during an interview.  I have a lot more success during interviews when the SPE is present (and not a primary).

If the primary signs the final and advisory, and the applicant wins on appeal, who gets in trouble: the SPE or the primary?  Or both?

[JustAnotherExaminer]

For assistant examiners (i.e. non-primaries), I understand that the SPE has to review and sign/approve a final action.

Anyone with FSA can sign a final action on behalf of another examiner.

But what about an advisory action?  Does the SPE have to approve those too?

Same as finals, no.

Is it just me, or are SPEs a lot less likely to agree with the examiner than primaries?

Examiner seem to be annoyed when I ask for a SPE and not a primary during an interview.  I have a lot more success during interviews when the SPE is present (and not a primary).

If the primary signs the final and advisory, and the applicant wins on appeal, who gets in trouble: the SPE or the primary?  Or both?

SPEs backup their examiners more than primaries, IMO. The examiner was annoyed because scheduling with a SPE is harder than scheduling with a primary.

And no one gets in trouble if applicant wins on appeal.  The only time someone gets in trouble is if their stance is unreasonable, which is rectified way before it hits BPAI.

[patentatt]

SPEs backup their examiners more than primaries, IMO. The examiner was annoyed because scheduling with a SPE is harder than scheduling with a primary.

I don't know.  In my experience, SPEs are smarter and have better English skills than primaries, on average.

You would know better than me though.

And no one gets in trouble if applicant wins on appeal.  The only time someone gets in trouble is if their stance is unreasonable, which is rectified way before it hits BPAI.

"On appeal" means, to me, filing a Notice of Appeal.  "Winning on appeal" means overcoming the rejections, regardless of whether the examiner preemptively withdraws them or the BPAI does.

It is little solace to applicants, when they win on appeal, that their case didn't have to wait for a BPAI decision.  They still had to pay a $620 Notice of Appeal fee and a $620 appeal brief fee (if filed), and spent $3000-$7000 having an attorney review the bad rejections and prepare the after final response (if filed), PABR (if filed), Appeal Brief (if filed), and/or Reply Brief (if filed).

On the other hand, an application is more likely to be allowed after a BPAI decision than after a Pre-Appeal Brief Request or Appeal Brief.  Also, waiting for the BPAI racks up PTA.

But I digress.

[klaviernista]

Technically an advisory action can only be signed by a primary (see MPEP 1005). So every advisory action for a junior is signed by a an examiner with signatory authority, such as an SPE. Of course things get rubber stamped all the time. It's a lot easier to rubber stamp an advisory than an allowance.

Minor fix.  Primary examiners that are not SPE's can also sign AA's.

[Simpletown]

JAE probably has more experience and is correct that a SPE is more likely to back up an examiner, but I think that is probably from the fact that supervisors appear to sign more cases. As my experience goes, it doesn't matter if it is a SPE or a primary. What matters is who signed the action. When I call up a supervisor about an action he has signed, he normally backs it up, even if he didn't look at it in the first place, since he would basically be admitting to his mistake in signing it. If I call up the supervisor about a case a primary signed he normally is willing to listen and often doesn't like what the other person has done. This seems to follow how things work everywhere. People are more forgiving of their own mistakes than other peoples. I normally look to see who signed the action. If it is a primary, the SPE will likely over rule them. If the SPE signed it themselves, they are normally less likely to budge. Who knows, I may be wrong, and this difference may come from the supervisors actually reading the case the first time and agreeing with it. I doubt it though.

[patentatt]

JAE probably has more experience and is correct that a SPE is more likely to back up an examiner, but I think that is probably from the fact that supervisors appear to sign more cases. As my experience goes, it doesn't matter if it is a SPE or a primary. What matters is who signed the action. When I call up a supervisor about an action he has signed, he normally backs it up, even if he didn't look at it in the first place, since he would basically be admitting to his mistake in signing it. If I call up the supervisor about a case a primary signed he normally is willing to listen and often doesn't like what the other person has done. This seems to follow how things work everywhere. People are more forgiving of their own mistakes than other peoples. I normally look to see who signed the action. If it is a primary, the SPE will likely over rule them. If the SPE signed it themselves, they are normally less likely to budge. Who knows, I may be wrong, and this difference may come from the supervisors actually reading the case the first time and agreeing with it. I doubt it though.

I agree - that probably explains the entire effect that I was talking about.