Thinking like a patent examiner

We are privileged to have a former USPTO patent examiner, Lyman Smith, as Of Counsel patent attorney to our firm. The following insightful answers come from Lyman’s familiarity with the inner system of the US Patent Office. Keep in mind we are talking about utility nonprovisional patent applications, and not design patent applications or provisional patent applications. Let’s dig into the mind of a former patent examiner.

Do patent examiners review the specification?

(if so, what do examiners look for?)

Patent examiners should review the specification to ensure the patent codes (35 USC) and patent rules (37 CFR) are followed properly.  This can include:

  1. making sure reference numbers used in the specification are present in the Figures;
  2. making sure reference numbers in the Figures are described in the specification;
  3. making sure claim elements are properly shown in the Figures and described in the specification;
  4. finding appropriate structure for means-plus-function claim language; and
  5. making sure there are no obvious omissions.

Depending on the length, some examiners may read the Background section. This can be helpful to: (1) determine what the inventor feels is background material; and (2) to find prior art to use against the claims if the claims are broadly interpreted. If the claims are overly broad, sometimes any prior art discussed in the background can be used in a rejection.

Depending on the technology, an examiner may read the specification carefully to determine the scope of the invention or to just understand the claimed invention.  A complete read of the specification is probably quite rare, as trained examiners know where to turn to get the information they need to ensure a compliant specification. 

Typically, many examiners will begin with a brief review of the specification and drawings to get an idea of the invention and move directly to the claims, using the specification for clarification of the claim terms and to ensure proper description of claim terms.

How do patent examiners search prior art?

Patent searching has long been based on patent classification. An examiner will review the claims and decide one or more patent classes / subclasses into which the claims fall.  An examiner can then search those classes and subclasses for relevant prior art. Examiners also use keyword searches to either (1) narrow a search in a specific patent class; or (2) broaden a search by, for example, not limiting the key words to any specific class. This is why you may get prior art in a rejection that is not in your particular field, but may be applicable to your invention. 

For example, if you are patenting a suitcase with a specific zipper design, the examiner may combine art to a suitcase with art in the clothing field, where the zipper for clothing may be used in a suitcase. If the examiner only did a class search on suitcases, they may not find the zipper design. Broadening the search to other keywords or to other patent classes can make the search more complete. 

For chemical and biotech based inventions, examiners have access to searching sub-structures, amino acids and DNA bases, for example. Since 2013, the USPTO has migrated patent classification from the United States Patent Classification code system (USPC) to the Cooperative Patent Classification code system (CPC). Based on our own searches and comments from current USPTO examiners, the CPC system generally has more patents in each class at the present time. Under the USPC, the USPTO could add additional subclasses to break up larger classes. However, because the CPC is used in other patent offices (such as the European Patent Office), the USPTO cannot simply split out classes into multiple subclasses like they used to under the USPC.

How do patent examiners handle examiner interviews?

Interviews with examiners are handled in various manners throughout the USPTO. Examiners are either “primary” examiners or “junior” examiners. A “primary” is an examiner who has been at the USPTO usually at least 4 years and has undergone a “signatory review” process, where the work of the examiner is reviewed for a period of time. A primary examiner has signatory authority to sign off on their actions. A junior examiner requires a sign-off by a primary or a supervisory patent examiner (SPE). 

Based on experience, about half of the junior examiners (and all of the primary examiners) conduct interviews on their own. The downside of having only the junior examiner present is that there cannot be any final agreement on patentability. Junior examiners require a sign-off from a primary. This, however, will not make a practical difference since it is rare to reach a final agreement in an interview.

Increasingly more examiners seem to favor interviews as a way to move cases forward. Some examiners appear to be on their guard when conducting an interview. Being a former examiner proves helpful. I can understand the examiner’s position and talk with them on a level where we know what to expect from the interview without pushing the examiner into a corner. This experience also helps us narrow the issues and send discussion points to the examiner prior to the interview, where we can then get to the point in our call. Examiners usually appreciate this. When we can come to a mutual understanding with the examiner in a brief call, everyone wins. 

Each examiner is provided a pre-set number of hours for a case and is provided “counts” for various steps in a patent application. The examiner’s “production” is tracked by the USPTO as part of their job performance. For example, suppose an examiner gets 1 count for a first action and 1 count for later allowing the case, and this took 20 hours. If the examiner is allotted 10 hours for the case, the examiner’s production is 50 percent. Of course, the calculation done biweekly involves multiple cases, where the number of counts for 100 percent production is based on the hours worked in that bi-week period.  

An examiner is provided a set amount of time, let’s say 1 hour, to prepare and conduct an interview.  If the examiner feels we are wasting his or her time by being unprepared, an overall negative impression may result, which is unhelpful in advancing our rationale for patentability. On the other hand, we can be prepared and the interview goes quickly and effectively. The examiner is happy as they get an extra hour of time and has also helped advance the application. In the example above, the 10 hours allotted for the case would actually be 11 with the interview, thus raising the examiner’s production.

How do patent examiners approach Restriction Requirements?

An examiner’s performance is measured by, among other factors, their production – the number of counts actually earned in a bi-week as compared to the expected number of counts based on hours worked. Years ago, a Restriction Requirement was not afforded any counts, but they were still issued to greatly reduce the time required to provide the first action on the merits (where the examiner does earn counts). 

Thus, if a case can be restricted, many examiners will promptly do so to save time. This is at the discretion of the examiner, and they can choose to examine multiple “inventions” in a single case without issuing the restriction. This can be a question of balancing time.  In other words, does the amount of time to issue a restriction take longer than the amount of time to examine multiple inventions? If so, many examiners will just examine the entire case. We often see this where we have apparatus claims and method claims tied to the apparatus. This is one area where the examiner has quite a bit of discretion so it can be difficult to prevail against restrictions when they are proper.

How do patent examiners feel about responses to Final Office Actions?

Years ago, the examiner did not receive any time allotment or incentive to consider a response after a final rejection. Often, only where the response accepts allowable claims would such “after-final” responses be accepted and entered. Nowadays, we have the After-Final Consideration Pilot (AFCP) program, where examiners are given 2-3 additional hours on their case allotment to consider the response. Many examiners appear to like this program as it gives them time to review responses, conduct an interview, and try to get to an allowance. Even when we do not get an allowance, we will receive an Advisory Action that may include more detailed information about why our after-final response was not good enough.

We, therefore, like to file any after-final responses under this program whenever applicable. We have even called examiners to tell them we are filing a response under the AFCP program and the amendments are simply to get allowance. Examiners seem to appreciate this, as we could have filed the response without the AFCP program and still had it entered (since it provides allowable claims). By filing under the program, however, we give the examiner the extra time allotment. This also builds stronger relationships with the examiners which may come in handy with any continuing applications. 

One additional observation regarding after-final responses relates to the latest “count” system. If we have to file a Request for Continued Examination (RCE), the number of counts afforded to the RCE case is less than the original case. This provides the examiner with additional motivation to work out allowable subject matter. However, an RCE may still be necessary in some cases. If we are making progress and have already filed two RCEs in an application, we may choose to file a straight continuation application instead. This resets the count reduction for RCEs in the case, and a continuation filing is treated as a regular application for count purposes. While this practice should be used only in limited cases, it can help generate goodwill with examiners when we are working closely with them to advance a patent application.

What do patent examiners care about? 

Much of this discussion is based on counts and time considerations. These are the important factors when we step in the shoes of a patent examiner.

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Vic Lin

Vic Lin

Startup Patent Attorney | IP Lead Partner at Innovation Capital Law Group
If you are a startup or small business, we want to help. Our mission is to equip entrepreneurs with solid IP rights that facilitate funding, growth and sales. Let's get to work! Direct: 949.223.9623 | Email: vlin@icaplaw.com