Are the new continuation and claim limit rules the “cure all” for the USPTO?October 8, 2007

It looks like the USPTO is hoping that the new rules limiting the number of claims and continuation applications will solve its problems in other areas, particularly examiner retention. Last week, the Government Accountability Office (GAO) issued a report entitled "U.S. Patent and Trademark Office: Hiring Efforts Are Not Sufficient to Reduce the Patent Application Backlog." An excerpt of the summary of the report is telling of the USPTO's management issues:

According to USPTO management, patent examiners leave the agency primarily for personal reasons, such as the job not being a good fit or family reasons. In contrast, 67 percent of patent examiners identified the agency’s production goals as one of the primary reasons examiners may choose to leave USPTO.

Clearly there is a disconnect between what USPTO management thinks and what examiners are actually experiencing. In response to the report, the USPTO issued a press release, stating that it will use the data from the report to "review assumptions the agency uses to establish production goals for patent examiners" and "work with its examiners and user communities" during the review.

Interestingly, however, the release also has this statement (emphasis added):

USPTO Director Jon Dudas praised the GAO report, stating "I am pleased that, after careful study, the GAO agrees with our assessment that hiring alone will not reduce the backlog of patent applications. By far, our most valuable resource is our employees. We believe that our 5-year strategic plan identifies initiatives that effectively protect innovation while promoting a quality workplace that attracts and retains employees. That is why many of our most current initiatives incentivize applicants and the public to provide the best information to patent examiners early in the examination process."

This is clearly a reference to the new continuation and claim limit rules. Apparently the USPTO is counting on applicants not filing applications with more than the 5/25 claim limitation because of the disincentive of the examination support document, and this easing the load on examiners because applications will become easier to examine. Sounds great, right? Well, maybe not. More discussion on the likely end result of this for examiners after the jump.

According to the GAO Report, attrition rates are startling. For every 2 new examiners the USPTO has hired in the past 5 years, 1 examiner has quit. Production goals are such that examiners often have to work unpaid overtime and work during vacations to meet production goals (pp. 18-19). First the examiners' point of view (emphasis added):

We estimated that 18 percent of patent examiners who had been at USPTO from 2 to 12 months worked to meet their production goals while on paid leave, and 50 percent of patent examiners with over 5 years’ experience at the agency had to work to meet production goals while on annual leave. As one respondent to our survey explained, “Vacation time means catch up time.” Another respondent summed up the situation as follows: “I know that the production goals are set to keep us motivated in order to help get over the backlog but if a majority of examiners cannot meet those goals without relying on unpaid overtime or annual leave then something is wrong with the system.” We estimated that because of the amount of unpaid overtime that they have to put into meeting their production goals, 59 percent of patent examiners consider it one of the primary reasons they would choose to leave USPTO, and 37 percent identified the amount of time they must work during paid leave to meet their production goals among the primary reasons they would leave the agency.

From USPTO management's point of view, everything's A-OK (emphasis added):

This extensive amount of unpaid overtime does not appear to be a concern to USPTO management, even though the agency has not been able to meet its productivity goals for the last 4 years. When we queried USPTO management about the agency’s policy regarding patent examiners working unpaid overtime to meet their production goals, the Deputy Commissioner for Patent Operations told us, “As with many professionals who occasionally remain at work longer to make up for time during the day spent chatting or because they were less productive than intended, examiners may stay at the office (or remote location) longer than their scheduled tour of duty to work.”

This is in line with the examiners' perception of a "sweat shop" philosophy in the USPTO. Here is the raw data:

The full range of reasons why examiners would leave:

Note that far and away the highest percentage cite production goals and what they have to do to meet them as at least an important reason to leave the USPTO.

The USPTO is reviewing a pilot "flat goal of production" program to track examiner productivity. That program would, instead of placing targets for production on each examiner biweekly, would place the production goals on a quarterly system. What's the catch? Under the current system, an examiner has to meet 95% of his or her "expected" output in order to be considered "fully successful," and between 70-75% of the examiner's time was to be spent examining cases (with the remainder for training, applicant interviews, and other similar activities). Under the new system, to be "fully successful," an examiner must meet 100% of the expected output, and spend 80% of his or her time examining. As described (p. 3) by POPA (the Patent Office Professional Association):

The agency said that the goals would be figured by technology expectancy using a base goal of 80 percent examining time (64 hours/bi-week). Historically, the patent corps averages 70-75 percent examining time, with the remaining time used for training, appeals conferences, interviews, leave time, etc. Therefore, the new goals have a built-in additional average increase of 5-10 percent. The USPTO’s assumptions of time needed by examiners to perform non-examining functions were not based on actual examination data. The USPTO’s calculation that employees should average no less than 80 percent examining time per bi-week assumes for each employee:

• 8 hours per holiday;
• 20 days of annual leave per year (26 days for employees in 8-hour leave status, 13 days for employees in 4- hour leave status);
• 6.5 days of sick leave per year;
• 2.5 hours per bi-week to train a junior examiner;
• 1 additional hour per bi-week to train a junior examiner who is a probationary examiner;
• 1 hour per bi-week for classification of new cases;
• 1 hour per bi-week to process pre-grant publications;
• A total of 5 hours per bi-week for all other categories of non-examining time (restrictions, PCTs, legal or automation training, etc.).

Furthermore, management’s program makes no provisions to deal with extended sick leave or leave without pay for family or medical reasons until an employee exceeds 26 days per year. In other words, if an employee were ill for more than 6.5 days but fewer than 27 days, the examiner would remain responsible for the production during that time.

This begs the question: if production goals and their related problems (unpaid overtime, working on vacations/holidays) are the #1, #2, and #3 reasons why examiners would leave the USPTO, and the USPTO is trying to retain more examiners, why would a proposed new productivity measure increase production demands on examiners? The answer appears to go back to the new claim and continuation limits. While the new targets for examiners would be higher, the USPTO apparently believes that because most applications affected by the new rules will have fewer claims, they will be easier and faster to examine. And, for any applications with more claims, the examiner will have the magic ESD that will walk them through the most relevant prior art, and give them a blueprint for the initial rejection of the application.

Of course, this doesn't take into account the increased number of appeals that will inevitably be filed under the new rules, given the strict limitations on continuation applications. It also doesn't take into account that applicants will more likely amend claims during prosecution to include limitations that were not in the claims originally, given the limitations on the number of claims. While examiners are supposed to search what is claimed and also what would "reasonably" be claimed based on the specification, there's no way to read the mind of the inventor or attorney to do an effective search on unknown future limitations. All these things take time, and it looks like it will be time examiners won't have if the new production goals are implemented. So, it doesn't look like the new rules will be the cure-all USPTO management hopes they will be.

All in all, when examiners are overworked, it's not only bad for them, it's also bad for applicants and the public. This is because it increases application pendency time, it can result in less than clear office actions, and arguably, what the public perceives as "low quality" patents. Hopefully the USPTO will take the recommendations from the GAO report and implement a system where examiners feel like they have sufficient time to do their main job: examining. If this happens, not only will examiners be happier, but the perceived quality of examining should go up, resulting in applicants being happier. Also, if this results in a better examination