Anticipate This!™ | Patent and Trademark Law Blog

The Word From The USPTO Trenches.

Posted in Practice Commentary by Jake Ward on March 12, 2010


Conducting interviews with Patent Examiners is quite a large part of my practice .  In my opinion, interviewing is an extremely effective tool that applicants can use to further prosecution of their patent applications.  Interviews can also lead more quickly to patent application allowance, and a subsequent issuance of a patent. 

I often conduct interviews by teleconference.  However, personal interviews can sometimes be more effective, particularly when there is an exhibit available that shows the invention.   Thus, I make a number of visits every year to the U.S. Patent and Trademark Office (USPTO) in Alexandria, VA.  During one such visit this week, I made a few observations that I’d like to share with our readers.

  • Examiner morale appears to be improving!  I had an Examiner tell me a few years ago that “no one smiles here anymore”.  This seems to be changing, in large part to the efforts of the Kappos administration such as the new count system.
  • There appears to be an internal push underway, and not necessarily driven by the administration, to have newer Examiners (who only know the ways the USPTO operated under Dudas) make decisions and work with applicants in a way that finds patentable subject matter sooner rather than later.  Some of the more experienced Examiners I spoke with had alluded to the fact that they were working with junior Examiners to adjust their examination practices accordingly.
  • The culture of “reject, reject, reject” appears to be going away as well.  I say this not based on the results of the interviews I conducted (which went well, by the way), but based upon comments from multiple Examiners with whom I spoke.  One Examiner indicated that he believes there will be a rise in allowance rates this year, after the sharp declines that were observed during the earlier Dudas administration.

Happy Examiners = Better Examination = More Allowances?  Let’s hope so. 

Any comments from our readers on this topic, and especially our Examiner readership, are most welcomed.

3 Responses

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  1. J. A. said, on March 14, 2010 at 10:05 pm

    I am an independent inventor and after the new count system went into effect I’ve had a few O.A. and only one Examiner was diligent in identifying allowable matter and that is one out five. In my situation it has been the same old story, ‘reject, reject and reject right now’ since at least three of the O.A. was in plain error and the error could have been solved if the examiner had understood the claim, application and prior arts.

    Sorry to say, I am still in the same old ship with more responses, RCEs and maybe appeals than necessary. I still thing that the USPTO is in business for the mega companies with a lot of resources to fight the system with attorneys fees, continued RCEs and appeals.

    I hope it change, I really do and I need these changes badly since I spend a fortune with the USPTO’s Examiners mistakes.

  2. Joseph Page said, on March 16, 2010 at 3:16 pm

    “Reject, reject, reject” – certainly needs to go – but I don’t want them to replace it with “Accept, accept, accept”. Good quality examinations are needed for everyone. But, that starts with good moral – so your observations are a welcome note. Thanks.
    Integrity Intellectual Property

  3. 6 said, on March 29, 2010 at 4:09 pm

    My moral is higher when I’m reject reject rejectin’.

    I already told you guys why more allowances are comin’. Ned fees.

    Maybe I’m kidding about the former, but not about the later.

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