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May 01, 2022


Thank you for this post. I appreciate your effort to present a balanced view. Unfortunately, having been stuck several times with examiners on the 10% allowance end of the spectrum, and no mechanism in that situation for obtaining a reasonably fair examination, I feel the patent office has failed and continues to fail in providing a level playing field for applications and applicants.

One provision of the rules that can be applied to at least the "expert examiner" problem is 37 CFR 1.104 (d) (2). (MPEP § 2144.03 (C)):

When a rejection in an application is based on facts within the personal knowledge of an employee of the Office, the data shall be as specific as possible, and the reference must be supported, when called for by the applicant, by the affidavit of such employee, and such affidavit shall be subject to contradiction or explanation by the affidavits of the applicant and other persons.

While you don't generally need to go to the affidavit stage, a gentle reminder that the evidence needs to be supported by the record can have examiners realize that what they thought was the case in the prior art actually wasn't, when they cannot find a citation to back up their rejection.

The "low-effort action" that I often run into is the all-purpose reference that makes everything obvious. This is very common in fields like cosmetics, where everybody is working with the same collection of approved-by-regulators ingredients. The examiner cites (his or her favorite) patent or application with sixty pages of cut-and-pasted boilerplate, in view of which pretty much anything is an "obvious" combination of known elements.

When faced with a kitchen sink rejection, or any poorly-written and/or poorly-reasoned rejection, I find it helpful to cite 35 USC 132(a); and point out that the Applicant has not received sufficient information to be able to judge the propriety of continuing prosecution. This sometimes encourages the Examiner to sharpen up the rejection to the point that it can be successfully addressed.

I agree with everything in the post.
To my mind it is a fundamental problem of the PTO that such a variation in allowance rates ("Just based on examination statistics, the average allowance rate across all examiners is 76% but some examiners have an allowance rate of less than 10% and others have an allowance rate of greater than 90%") not only exists but is toleratd by PTO management. Surely, there are good and bad examiners, but the evidence suggests that the PTO signally fails to make any attempt to achieve consistency in examination quality. Until this happens, we're all stuck with wondering as much about who will get our next application as whether we did a good job writing it - that will frequently be tested worldwide, and we'll know.
I asked an EPO examiner once about this issue, and he said that with panels of three, even if one was charged (and credited) with most of the work, outliers pretty quickly learned to be reasonable. EPO-style examination is probably unrealistic in the US, but better QA/QC surely is both possible and needed.

Following up on Derek Freyberg's comment, nd being myself in Europe, i would kindly ask readers for their impressions of examination at the EPO. Does it suffer from the same eight annoyances, and are there additional ones peculiar to the EPO?


I have found that EPO examiners often pay much more attention to the independent claims at the expense of the dependents. So the "dependent hand wave" is common. Having said that, it is even worse in other jurisdictions, with Australia, India, and China being particularly bad examples.


Tks, Mike. in relation to perfunctory analysis of dependent claims, my experience at the EPO is that Exrs use for dependent claims a mixture of "offer" and "invitation to treat". I gather that in the USA the expression "invitation to treat" is expressed as "invitation to bargain".

I mean, what's the point in going into the patentability of each and every dependent while the untenable independent claim on which they all depend is still in play and for as long as the Exr has no idea what curative narrowing amendment will be attempted?

The "offer" response is increasingly used by the EPO, suggesting to Applicant that dependent claim xx looks like a route to allowance.

Is it not just the same at the USPTO? If not, whyever not?


To your question of "Is it not just the same at the USPTO? If not, whyever not?"

Our Sovereign has an expressed path of prosecution that you should be well aware of in your several decades long interaction on US Patent law blogs: compact prosecution.

No, then, it should have been obvious to you prior to your asking, the US examiner is NOT in a position to be inviting to do further examination.

The "whyever not" is also plain: applicants have paid a fee for a FULL examination - not just the independent claims, nor even the independent and dependent claims - but of the ENTIRE application.

Whyever would you think otherwise? Or did you bother to think (as opposed to take yet another opportunity to shill for the EPO way?

As to that last question, your 'polite' reply leaves me:

Skeptical, your comment helps me to see an important difference. Thank you for that.

At the EPO, unlike at the USPTO, examination proceeds through a dialogue between Examiner and Applicant that continues as long as i) the successive Applicant responses are constructive and ii) progress towards an allowable set of claims continues to be made. And all that for just one single payment of one exam fee.

No wonder then, that the form and content of EPO Actions and those of the USPTO are different.

Thank you for this post and discussion. While poor quality examination is a costly and time-consuming “annoyance” for practitioners and clients with deep pockets, it is a death knell for inventors with more limited resources. I will never forget a brilliant, resourceful client who invented a truly novel, non-obvious, useful, and commercially-successful product while literally working “in the garage” as an employee of a small family business. After several months of dealing with an “expert examiner” he concluded there was no way he could afford the attorney fees needed to continue and the application b became dedicated to the public.

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