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[PatentJunkie]

This thread is created for Patent Attorney/Agents (PA/A) and Patent Examiners (PE) to talk about the problems they have with one another.  Hopefully, this thread would help either or both sides to understand the problems each have on the issue of compact patent prosecution and a better quality of patent prosecution.

First, I would like to say that I was once a Patent Examiner at the USPTO (USPTO) and now I work for a patent firm.  Additionally, I am currently neither a Patent Attorney/Agent nor a Patent Examiner.

1. Topic I - "Production" at the USPTO and the Effect on Compact Prosecution:

I feel that many PE at the USPTO are so pressured by "production" that they are forced to find irrelevant prior art in order to meet their biweekly quota.  It is ridiculous that PEs do not appreciate the amount of time and effort put into drafting a patent application by PA/As.  Although it is the PA/As duty as a practitioner to file a patent application with the broadest coverage as possible for the inventor, PEs on the other hand play the "hide and go seek" game of withholding the most pertinent prior art in order to receive a disposal and then a Request for Continued Examination (RCE) count. 
Additionally, telephone interview or personal interview practice between PA/As and PEs are rarely used because it is a well known FACT that PEs do not substantially contribute to the interview to expedite the prosecution process to disposal.  For instance, many PEs responses to questions asked by PA/As are, "Well, I have to further consider your arguments", "I would have to do a further prior art search", "I have to consult my Primary Examiner or Supervisory Patent Examiner", etc.  With the prior knowledge of what is relevant prior art after doing a prior art search, PEs have the best knowledge of whether there can be something done to the claims in order for the patent application to be allowed and issued as a patent.  Nothing during the interview process is there helpful suggestions as to what can be done to have the patent application allowed.  In my personal opinion, I feel the USPTO should have an independent department to help Junior PEs during the interview process to expedite the prosecution process.  It is the PEs job NOT to just reject claims but to also GRANT patents to benefit the public.  The reason for this useless practice is because the PEs wants the PA/A to file an RCE, then reject the RCE in order to receive multiple counts for one patent application due to the word "production".

2. Topic II - Signatory:

A Primary Patent Examiner (PPE) or a Supervisory Patent Examiners (SPE) mood depends greatly on whether an Office Action will be signed.  Additionally, the relationship between a PE and a PEE/SPE will greatly impact whether the Office Action will be signed.  For instance, there has been many cases during my employment as a PE that resulted in a "garbage" Office Action being signed because of the mood the PPE/SPE is in or because of my connections.  On the other hand, many other PEs that are diligent in issuing Office Actions are denied a signature because their relationship with their PPE/SPE is on shaky grounds.  Therefore, many Office Actions of poor quality is issued by the USPTO.

3. Topic III - Retention at the USPTO:

Retention at the USPTO has been a huge problem. There are many factors the contribute to the retention of PEs at the USPTO.  Some of the reasons are:
     a. Production
     b. Not having Office Actions signed because of employee conflict
     c. Searching prior art

With regards to (a), production has caused many Junior PEs to be under extreme pressure.  An average Junior PE at a GA level of 7 has to accumulate approximately 4 counts, respond to Applicant's Responses, Amendments, etc. in order to be in good standing with his/her supervisor.  In order to receive 4 counts and juggle other duties as a PE is not easy.  Therefore, the pressure of production results in the low retention rate at the USPTO and additionally the reason for the the large employment opportunity at the USPTO.

With regards to (b), the relationship of a PE and the person signing their cases is extremely important (Emphasis Added).  If a PE is in good standings with his/her PPE/SPE, their cases will most likely be signed without any substantial problems that will affect their production.  On the other hand, if a PE is on the bad side of a PPE/SPE, his/her Office Actions or cases will have a tougher time being signed.  Everything at the USPTO is dependent on connection.  Therefore, many PEs leave or transfer Art Units (AU) or Technology Centers (TC) because of their relationship with their superior, resulting in a decrease in retention at the USPTO.

With regards to (c), prior art searching is one of the most hardest part of patent examination.  Because prior art searching is so difficult for Junior PEs, the USPTO should reduce their formula for production.  Many Junior PEs quit because they can't find the most pertinent prior art for their rejection based on the "feel" of their PPE/SPE.

This is some of the reasons why I believe the USPTO has issued poor quality Office Actions.

[RoyOfChateau]

PatentJunkie's article is very helpful.

[horsechute]

Everything said is absolutely true. Thank you. Just a few follow up points:

1) People who stay on at the PTO are often (though not always) those who could not move up into getting lawyer/agent jobs.
2) Patent examining is a vitally important job, but often the work is fruitless. Of the patents I issued, for all my hard fought battles, about a third to a half didn't even get the first maintenance fee paid.
3) The PTO is the oldest governnent agency (or at least very old) and work conditions vary over time, but they are generally bad, and right now terrible.
4) The value of being an examiner to working as an agent or lawyer is overrated, and near useless after 1 - 2 years. See other posts on this blog. Also, staying longer than 2 years will probably hurt your chance of getting a job in a law firm. Again, see other posts on this blog.
5) Patent examiners are paid fairly well after a few years, but there is a reason - their technical skills become depreciated.
6) If you work at the PTO, you run the risk of being denied a registration number when you leave, as we have seen lately (need I say more?)
7) For people prosecuting applications there is only one, magical word you need to know: APPEAL.
8  Law firms offer better deals for law school tuition reimbursement than the PTO, they are not generally subject to suspension like the PTO's, and your committment is less, in my experience.
9) Turnover at the PTO is high, but for a reason - see the above.

[mk1023]

I feel that many PE at the USPTO are so pressured by "production" that they are forced to find irrelevant prior art in order to meet their biweekly quota.  It is ridiculous that PEs do not appreciate the amount of time and effort put into drafting a patent application by PA/As.  Although it is the PA/As duty as a practitioner to file a patent application with the broadest coverage as possible for the inventor, PEs on the other hand play the "hide and go seek" game of withholding the most pertinent prior art in order to receive a disposal and then a Request for Continued Examination (RCE) count.

Lawyers play plenty of games too. Maybe they spend lots of time drafting an application, but they definitely don't spend enough time understanding the "contribution" of the invention over prior art. If they did, I wouldn't have had two applications in the same week where the broadest claims are read on a generic mobile IP home agent fully detailed with inherent features that I have to document with multiple references. I don't set out to withhold prior art, but I want to get my counts done as fast as possible. Therefore, I put forth the simplest and most comprehensive rejection I can as fast as I can. I still find good art (I allowed four cases last bi-week all on second action), but I have no problem going multiple rounds if round one claims the sun, the moon and the stars.

[mk1023]

Additionally, telephone interview or personal interview practice between PA/As and PEs are rarely used because it is a well known FACT that PEs do not substantially contribute to the interview to expedite the prosecution process to disposal.  For instance, many PEs responses to questions asked by PA/As are, "Well, I have to further consider your arguments", "I would have to do a further prior art search", "I have to consult my Primary Examiner or Supervisory Patent Examiner", etc.  With the prior knowledge of what is relevant prior art after doing a prior art search, PEs have the best knowledge of whether there can be something done to the claims in order for the patent application to be allowed and issued as a patent.  Nothing during the interview process is there helpful suggestions as to what can be done to have the patent application allowed.  In my personal opinion, I feel the USPTO should have an independent department to help Junior PEs during the interview process to expedite the prosecution process.  It is the PEs job NOT to just reject claims but to also GRANT patents to benefit the public.  The reason for this useless practice is because the PEs wants the PA/A to file an RCE, then reject the RCE in order to receive multiple counts for one patent application due to the word "production".

I agree with most of what you're saying. When I want to deal I call the lawyer. Applicant-initated interviews have been a waste of time for me. I don't have time to come in fully prepared. Usually all I'm willing to do is say if an amendment will overcome a combination. I don't feel it's my job to tell applicant how to amend to get a patent. My art is very crowded and I don't know it well enough to make promises.

[liddel]

Hi,
I'm currently a 1L at GMU. I've been offered a position as a patent examiner, however I have also been offered a summer clerk posiiton at a small law IP firm (8 attorney's) with the option of working part time during the semester.

Which would be better experience?
Taking the PTO job would probably be more pay, but I would have to go to part time school.

No idea what the pay is for the clerk job.

Thankis,

[horsechute]

TAKE THE CLERK JOB!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!
You could have gone to the PTO before starting law school, but you are now too qualified to do a job which constitutes mostly searching for references. At the law firm, you can put your legal skills to work by helping out with things even besides drafting applications (ie, legal research, etc)
At the PTO, the people are fine folks, but they could generally care less about the law. Instead, they are really like a bunch of nutcrackers. When Judge Rader recently gave a talk there, he asked how many people had read Phillips v AWH, and out of about 300 examiners in the room, less than 10 hands went up. Associate yourself with some intelligent, legally motivated people like yourself, and take a step forward, not backwards. To me, this question isn't even close, and salary is not an issue at all. You need to start off on the right foot, and not with two left feet. I just hope the firm trains you well; even if not, you are guaranteed to be trained poorly by definition at the PTO. I think what I am saying applies to anyone thinking of working at the PTO at all. Just go straight to a firm and spare yourself the headache and loss of valuable experience associated with going to the PTO and only learning how to search....and search....and search....and do nothing else, except maybe learn how initial an IDS, fill in a time sheet, and total up your "counts" every two weeks.

HC

[liddel]

I've heard that firms love people with PTO experience. Looking at the law firm websites that I have interviwed with, associates with PTO experience is something they brag about.

What if I just work at the PTO until I'm done with school?

Would I be more marketable with two years of PTO experience vs. experience at a small IP boutique firm?

Thanks agian.

[horsechute]

"Looking at the law firm websites that I have interviwed with, associates with PTO experience is something they brag about."

Attorneys and Agents I worked with at the PTO laugh at statements like that (I am not ridiculing you, mind you) because we know PTO experience is so over-rated. A year or two there is OK, but more knowledgeable people, in my experience, say avoid it all together (someone at the biggest patent law firm in the world told me to stay away from it, and I didn't, and now know why he is one of the best patent attorneys around).

"What if I just work at the PTO until I'm done with school?"

You will have to compete with people who have experience drafting applications later on.

"Would I be more marketable with two years of PTO experience vs. experience at a small IP boutique firm?"

Start putting your legal skills to use. The PTO is full of people, often from GMU when it was not so hard to get in there, who never got their careers off the launch pad, and are instead searching for references all day long. If you want to join them, be my guest. If so, maybe someday you can get on a blog and tell people to go straight to a firm.

[wiener]

response removed after reconsidering what I wanted to say.

[PatentJunkie]

I feel that many PE at the USPTO are so pressured by "production" that they are forced to find irrelevant prior art in order to meet their biweekly quota.  It is ridiculous that PEs do not appreciate the amount of time and effort put into drafting a patent application by PA/As.  Although it is the PA/As duty as a practitioner to file a patent application with the broadest coverage as possible for the inventor, PEs on the other hand play the "hide and go seek" game of withholding the most pertinent prior art in order to receive a disposal and then a Request for Continued Examination (RCE) count.

Lawyers play plenty of games too. Maybe they spend lots of time drafting an application, but they definitely don't spend enough time understanding the "contribution" of the invention over prior art. If they did, I wouldn't have had two applications in the same week where the broadest claims are read on a generic mobile IP home agent fully detailed with inherent features that I have to document with multiple references. I don't set out to withhold prior art, but I want to get my counts done as fast as possible. Therefore, I put forth the simplest and most comprehensive rejection I can as fast as I can. I still find good art (I allowed four cases last bi-week all on second action), but I have no problem going multiple rounds if round one claims the sun, the moon and the stars.

What kind of games do lawyers play?  How do lawyers not understand the "contribution of the invention over the prior art"?  The sole purposes of a patent practictioner is to get the BROADEST coverage as possible for his/her client.  Regardless of whether you receive an application with claims that are ridiculously broad does not mean that the lawyer does not appreciate the prior art.  Although you might make the most "simplest and most comprehensive" rejection in view of the extremely broad claims, it is the PEs responsibility as a PE to help determine what Applicant defines as his/her invention with the broadest coverage as possible.  Additionally, it is stated in the MPEP that PEs should not just soley reject patent applications but to also allow patent applications.  It is the PE duty to the public to help define what is a resonable boundry for Applicant's invention.
In addition, the PE has the best knowledge of the prior art concerning Applicants field of endeavor.  Therefore, PEs are responsible to help Applicants and lawyers establish what can be done to have an patent application allowed.  For instance, if a Lawyer questions a PE (i.e., interview) on what procedures can be done to have the patent application allowed, the PE has the responsibility to consult his/her superior as to what constitues allowable subject matter and not squeeze every ounce of RCE out of one application.
Finally, many PEs see a patent application as simply a count for that bi-week.  With this PE mind set of Intellectual Property, the PE is not contributing to the well being of the public nor is it contributing to the advancement of technology. 

[mk1023]

What kind of games do lawyers play?  How do lawyers not understand the "contribution of the invention over the prior art"?  The sole purposes of a patent practictioner is to get the BROADEST coverage as possible for his/her client.  Regardless of whether you receive an application with claims that are ridiculously broad does not mean that the lawyer does not appreciate the prior art.

Games: 1) Layering with excessive text to crush examiner's will, 2) endless dependent claims, 3) unreasonably broad claims to start. I understand the need for broad coverage, but it's hard to get to allowable subject matter in one round if claims start unreasonably broad to start. If all lawyers took the time to understand the applicant's inventive contribution, then I wouldn't get two cases where the independent claims read on mobile IP home agents.

  Although you might make the most "simplest and most comprehensive" rejection in view of the extremely broad claims, it is the PEs responsibility as a PE to help determine what Applicant defines as his/her invention with the broadest coverage as possible.  Additionally, it is stated in the MPEP that PEs should not just soley reject patent applications but to also allow patent applications.  It is the PE duty to the public to help define what is a resonable boundry for Applicant's invention.
In addition, the PE has the best knowledge of the prior art concerning Applicants field of endeavor.  Therefore, PEs are responsible to help Applicants and lawyers establish what can be done to have an patent application allowed.  For instance, if a Lawyer questions a PE (i.e., interview) on what procedures can be done to have the patent application allowed, the PE has the responsibility to consult his/her superior as to what constitues allowable subject matter and not squeeze every ounce of RCE out of one application.

It would be nice if every invention had clear and novel improvements over the prior art, but 99% of the time that is not the case. I'm willing to be helpful if claims are close to allowable. If they're not, it's too much of a burden for me to wade through the spec and prior art to point out an exact combination I would allow.

Finally, many PEs see a patent application as simply a count for that bi-week.  With this PE mind set of Intellectual Property, the PE is not contributing to the well being of the public nor is it contributing to the advancement of technology.

I don't make any apologies for looking out for myself. I'd also argue that applicants viewing patents as commodities is part of the problem.

[liddel]

"Looking at the law firm websites that I have interviwed with, associates with PTO experience is something they brag about."

Attorneys and Agents I worked with at the PTO laugh at statements like that (I am not ridiculing you, mind you) because we know PTO experience is so over-rated. A year or two there is OK, but more knowledgeable people, in my experience, say avoid it all together (someone at the biggest patent law firm in the world told me to stay away from it, and I didn't, and now know why he is one of the best patent attorneys around).

"What if I just work at the PTO until I'm done with school?"

You will have to compete with people who have experience drafting applications later on.

"Would I be more marketable with two years of PTO experience vs. experience at a small IP boutique firm?"

Start putting your legal skills to use. The PTO is full of people, often from GMU when it was not so hard to get in there, who never got their careers off the launch pad, and are instead searching for references all day long. If you want to join them, be my guest. If so, maybe someday you can get on a blog and tell people to go straight to a firm.

Thanks for your feedback horsechut.

Is this the general consensus? Any other opinions?

Thanks

[horsechute]

Hope you had a good first year at Mason.

You might read some of the other posts like working at the PTO, and maybe check out the "just n examiner" blog. I am obviously highly negative about the PTO, but it helps if you can ask some live people too. Also, people generally like to complain about work. What really turned me off was when I heard about people being denied registration numbers for things that I felt didn't warrant it, and, well, things like people being dragged before a Virginia grand jury charged with felonious theft for not having enough gate time. Ok, I have mentioned this before, but I know as a fact other people were sometimes taken out in handcuffs for not having enough gate time when I was there (there was a message on my computer monitor from the PTO about it) and I was told that sometimes people in those situations were also arrested. You talk about a bad work environment! Ten years ago, it wasn't like that. Anyway, maybe someone else will speak up. I guess either way you can switch after a while. The EE, in my experience, is very important; but if you go PTO, the searches are a nightmare. Like Nancy Regan might have said, just say no to PTO. And go cubs, if you are from Chicago.

HC

[liddel]

The EE, in my experience

What does this mean?

Thanks