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June 23, 2024


To add some perspective, a 6.4% allowance rate is just a little higher than the chance of an applicant getting into an Ivy League university.

I retired 20 years ago so I can safely say publicly that fish rot starting from the head first. Brought back many happy memories of my now far departed prosecution days, when I used to call these the immaculate rejections because they required no substance at all. For the examiners it was just “101 and go home”

I would put forth to the readers, what is preferred.

1. An easy examination and allowance. Minimal PA cited, no per se file wrapper, no real distinguishing reasons why allowed
2. A "tough" examination, good search and PA of record, comprehensive distinguishing features noted in the record, and the like from a "LARE"?

As a former Primary and current corp Counsel, I believe that #1 opens you up to a lengthy PGR/IPR if that patent has any teeth, while #2 clearly identifies what is patentable.

Concerning the author's inference that LARE's are uncooperative, as a former Primary and Petitions Examiner at the PTO, an initial call from the atty to the examiner without an attitude goes a long way. Too many attys fight during the interview request, do not provide reasons why the rejections are in error, and are not willing to understand the Exm position.

I believe that if attys spent time examining, they understand the examiner's role, pressure, and job. Otherwise, too many attys have NO idea what it is like to examine, under time constraints that define their "quality", where one just cannot bill the client another 2.4 hours.

And when was it that you as an atty sent kudos to the Examiner and their SPE for a job well done?

You write:

"It has become generally accepted in the field that the examiner that is assigned to an application can be as determinative on its outcome as the application itself."

and I (looking in from Europe) am appalled. My first thoughts are that i) Examiners at the EPO (coming to the EPO from 40 or so different EPC Member States) have at least as wide a spectrum of personal opinion about what is patentable and what not as Exrs at the USPTO but that ii) the established law of patentability at the EPO is clear enough to render those disparate opinions irrelevant to the examination outcome. Basically, at the EPO, it makes no difference to the substantive outcome, which Examiner is allocated to the case.

@ Max Drei,

I would argue that some (if not most) of this falls down to the EPO working in three-examiner Examining Divisions. As far as I know, you do not get this setup at the USPTO until you use pre-appeal brief review.

Hi Extra. A 3-member Examining Division was necessary in the early days of the EPO, because the Examiners were arriving at the EPO froma multitude of different national Patent Offices all with their own different ideas about patentability, and quality depended on consolidation on a single line to be held by all Examiners. Now, 50 years later, no EPO Examiner has experience of any other ideas of patentability other than those set out in the EPO's own MPEP. EPO management pushes remorselessly for more "productivity". No longer does your European patent application receive scrutiny from more than one Examiner. But you may well be right, that the clarity of the EPO's law on patentability comes from that history.

Another reason for present day quality is that there is no supervisory court of law that can instruct the EPO what to allow and what to refuse. You might agree with me that there is nothing more effective than such a supervisory court, to render the Patent Office's job ever more difficult.

It’s easier for the PTO management to hand over responsibility to examiners and have easier jobs themselves. There is also a failure of enforcement of inequitable conduct. PTO staff who do the filing work now seem untrained to see or report inequitable conduct so it’s under the radar. I have had 2 examiners with huge egos who played games until RCEs were filed. Blame should also be directed to the USPTO fees not being increased enough as that underfunds the PTO so I believe they have insufficient staff workers. Also the AIA modifications to patenting are a disaster that makes patenting overly complicated and dysfunctional. The PTO websites are also very over complicated now and user unfriendly.

It’s no longer fun to do patenting.

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