The Telltale Prosecution History

When trying to assess a patent examiner, there are some obvious metrics that get a lot of attention. Allowance rate, number of actions to allowance, and appeal win rate are probably the most popular. These metrics are all helpful, but they obviously don’t tell the whole picture. First, each of them is influenced by myriad factors outside of the examiner’s control, such as the technology they work on, the applicants and applications that happen to get assigned to them, arbitrary and capricious changes in the law (or at least interpretations of the law), etc. Second, none of them is direct measure of the quality of examination. A fair, thorough, and diligent examiner might have a low allowance rate because she happens to get a lot of applications that are, by any objective measure, turds. She might have a high number of actions to allowance because of the aforementioned turds and because the applicants are unwilling to let them go. She might have a low appeal win rate because such number is generally based on a very small sample size.

In light of these confounding factors, how can we better assess the quality of work being performed by a particular examiner?

Secondary Indicia of Low-Quality Examination

There are some things in prosecution histories that to me, have the smell of an examiner that might be mailing it in, trying to game the system to get more counts, or is just otherwise unreasonable. Below is a list (in no particular order) of some of the ones I can think of. Some of these are already available in the BigPatentData examiner statistics tool, and I will be likely adding others, so please submit your ideas in the comments below or on LinkedIn (mention @bigpatentdata) or Twitter (mention @bigpatent). For really good suggestions, I will throw in a free trial of premium examiner statistics.

Consecutive nonfinal rejections

The policy of “compact prosecution” dictates that consecutive non-final rejections should be rare. Although a second (or third, or fourth…) nonfinal action might feel like a win (as compared to being faced with a final), in reality it often means that the first office action was a lazy or sloppy one.

An extreme number of restrictions

I previously discussed this one in “Are you Prosecuting Patents in Restriction Hell“

Frequently making the first action after an RCE final

Although MPEP 706.07(B) permits it, making the first action after an RCE final should, in my opinion, not be common. As long as the applicant makes a good faith attempt to advance prosecution in the response filed with RCE, the next action should be nonfinal. Repeatedly issuing final rejections on the first action after RCE shows nothing but a desire to be a hardliner. This is especially true because issuing a final earns the examiner fewer counts for a final than a nonfinal – cutting of the nose to spite the face!

Lack of examiner-initiated Interviews

In some sense, the Examiner holds all the cards in terms of whether an application gets disposed or forever churns. Actually, poker is not the best analogy. It’s more like the shell game. If an examiner thinks that there is something (or nothing) patentable in an application, then its much more efficient to pick up the phone and explain that to the applicant. Otherwise, the applicant is left continually guessing which shell the disposition is under.

Lots of petitions

Petitions are another thing that are relatively rare. One reason for this is that they do not toll the period for response, which often makes them useless from a practical perspective. Thus, if applicants are repeatedly resorting to petitions for a particular example, to me that is a hint the examiner trying to game the system. For example, one common trick is to make objections which should in fact be rejections, since rejections are appealable to the PTAB but objections must be petitioned.

Frequently reopening prosecution after an appeal brief

I talked a bit about this here. For more on the topic, check out the series of posts on MrIPLaw.com

By this point you may be asking “This is the BigPatentData blog, so where’s the data?” My reply to that is . . . touché. But I am still catching up after the holidays, so I will make you a deal and post data on these topics in the coming weeks, so be sure to subscribe to the blog or, better yet, support patent data transparency by signing up.