Everyone knows that there are times that are better than others for obtaining good deals.   One of the best times to buy a new car is at the end of the month when the car salesman is desperately trying to reach his or her quota for the month. Better deals can be had on retail items after the holiday season. Likewise, there are times when it is better to negotiate with the United States Patent and Trademark Office (USPTO) during the prosecution of a patent.

A patent examiner’s performance is measured by a count system. The examiner’s compensation, bonus, and promotion are all based on the count an examiner receives.  Examiners are allotted a given amount of time to complete a first office action on the merits. The time allotted is dependent on a variety of factors including the examiner’s experience and the complexity of the application. An examiner may be allotted as little as ten hours to review an application, search for relevant art, and write the office action.   Upon issuing the first office action, the examiner receives one count.

Examiners do not receive another count until the examiner disposes of the patent application or the applicant abandons it. There are many ways an examiner can dispose of an application including issuing the patent, responding to an appeal brief, or granting a Request for Continued Examination (RCE). For anything short of disposal, examiners do not earn credit, in the form of a count, for the work they complete. Thus, examiners do not have any incentive to invest significant time in responding to an applicant’s response to a first or second office action on the merits. Likewise, examiners have no incentive to conduct interviews unless it might lead to an allowance. Because examiners do not get a count for anything short of disposal, the second office action is generally issued as a final office action. Such an action forces the applicant to abandon the application, appeal the rejection, or file an RCE, any of which results in a count for the examiner.

If an RCE is filed, the examiner must issue yet another first office action on the merits which results in another count. Thus, if an RCE is filed the examiner gets two counts, one for the RCE and one for the first office action after the RCE. Thus, examiners have twice the incentive to force an RCE than to allow the application. Such an incentive can prevent acceptable applications from issuing and may result in unnecessary prosecution. This incentive might also explain why the percentage of filed RCE’s has more than doubled from 2000 to 2009.

The USPTO recognizes the problems in its count system and is reviewing options to overhaul the system, including possibly providing more counts for allowing an application and conducting an interview. In the meantime, there are a variety of things that can be done to account for the deficiencies in the current count system.

First, while budgeting for patent prosecution, it would be smart to budget for at least one RCE. Knowing that the examiner has an incentive to issue a final office action rejecting the application, smart budgeting dictates preparing for the possibility that prosecution may require an RCE.

Second, even though examiners do not receive counts for interviews, an interview often provides insight into the examiner’s true objections, which can often be addressed and overcome during an interview. Further, an interview requires less time from the examiner than addressing Applicant’s arguments. Anything that can be done to minimize the examiner’s time on the case, or time for which the examiner does not receive count, provides incentive for the examiner to allow the application.

Third, because an examiner’s allotted time is not dependent upon the number of claims in an application, an examiner can often perform a higher quality examination on an application with 20 claims compared to an application with 60 claims, because each claim must be addressed in the first office action. Thus, it may be more efficient to file an application with fewer claims, get the independent claim(s) allowed, and subsequently add the dependent claims. Of course, great care must be exercised in drafting and reviewing the application to ensure there is ample support for the subsequently added dependent claims.

Like buying a car at the end of the month or going shopping at the mall in January, understanding the count-carrot system and using it to the applicant’s advantage can help speed the patent application process and help manage prosecution costs.

Bobby Braxton is an intellectual property attorney at Carstens, Allen & Gourley, LLP. He prosecutes patents and trademarks and litigates intellectual property disputes.

This blog is maintained by Carstens, Allen & Gourley, LLP to inform readers of recent developments in intellectual property. Solely informational in nature, this blog is not intended to create an attorney-client relationship or to be used as a substitute for legal advice or opinions. For more information, please visit www.caglaw.com.

By Bobby W. Braxton