One vs. Two Examiners and Why it Matters
The Mind of the Patent Examiner SeriesBy: Dennis J. Parad
August 16, 2021
This article is part of a series from a former USPTO patent examiner to help prepare those applying for patents to understand what to expect and how to best assist the application process.
Other articles in this series:
When a USPTO patent application is examined, the Office issues one or more office actions that are either signed by a single examiner or a second examiner with authority to sign. My experience as a former Primary Examiner at the USPTO gave me a unique insight into what this signatory distinction means and why it affects patent prosecution strategy.
Not all patent examiners are equal. A USPTO examiner that lacks partial or full signatory authority (typically GS-7 to GS-13) is commonly referred to as a “junior” or “assistant” examiner. After several years of promotions, the certification exam (the USPTO equivalent of the patent bar), and a signatory program where supervisors scrutinize a plethora office actions over a probationary period, an examiner attains the rank of Primary Examiner (GS-14/GS-15) and the authority to sign most office actions. A Supervisory Patent Examiner (“SPE”) is a former Primary Examiner that also has signatory authority along with other managerial duties. SPE’s and Primaries approve and sign office actions of junior examiners. The inherent signatory authority of an examiner directly affects decision-making for determining the finality of an application.
INCENTIVES TO REJECT OR ALLOW
The signatory authority of an examiner may incentivize rejecting claims rather than allowing. Specifically, junior examiners have a greater incentive to reject patent claims and avoid indicating any allowable subject matter. The reason for this is because a junior examiner has the ability to reject patent claims at any point during prosecution but the determination of allowable subject matter cannot occur without approval from a Primary or SPE. Thus, a Primary or SPE is more likely to accept signing a rejection since that is easier than conferring with the junior examiner for determining allowability. This is especially the case when the junior examiner is under a time crunch to get a case off their docket. Additionally, examiners that have partial signatory authority (“PSA” examiners) have a motivation to reject cases that are non-final since they do not need a Primary or SPE to sign any non-final office actions. In contrast, an allowance is an office action that is final and, therefore, the PSA examiner does require a Primary or SPE to review and sign.
As an example of this phenomenon, in my first three years at the USPTO as a junior examiner, I rarely had a case where an allowance was issued in the first office action and I rejected claims more frequently than when I became a Primary Examiner. As a Primary Examiner, I could routinely allow cases earlier and often such as by proactively placing a call to the applicant’s representative to make suggested changes or by issuing an Examiner’s Amendment.
On the other hand, a junior examiner does not have these tools at their disposal and, depending on the grade level, they may not even have authority to conduct an interview without a Primary or SPE present. In theory, it should not make a difference. In reality, however, junior examiners may not be on the same wavelength as their Primary or SPE and issuing rejections is safer and easier to get office actions out the door, even if the grounds of rejection are weak.
PROSECUTION STRATEGY BASED ON SIGNATORY AUTHORITY
Each examiner is different and knowing the signatory authority of an examiner may affect prosecution strategy for the applicant.
It is important to remember that a Primary examiner is the exclusive authority until a case is appealed. Calling upon a SPE for assistance or requesting their presence in an interview when a Primary Examiner is the sole person examining a case is not only unhelpful but also risks anger and resentment from both the Primary and the SPE. A SPE may automatically presume the attorney is trying to subvert the Primary Examiner’s authority. Challenging a Primary Examiner’s authority to make decisions defeats the whole point of the years and hard work to achieve that title and rank.
On the other hand, requesting a Primary Examiner or a SPE when a junior examiner is being interviewed can be helpful since allowable subject matter cannot be determined without their approval. Moreover, a SPE or Primary Examiner typically has more experience that can facilitate decision making.
The examiner’s signatory authority may affect strategy to provide claim amendment(s) or arguments. For example, Primary Examiners may indicate how to overcome a rejection in an office action by suggesting a claim amendment. A junior examiner is less likely to reveal what could overcome the rejection. Furthermore, a junior examiner may have a higher likelihood of rejecting claims that are amended, which may not be worthwhile in the first place if the grounds of the rejection are weak.
Finally, the examiner’s signatory authority may also influence the decision of whether to appeal or continue prosecution. For example, knowing the proclivity of a junior examiner to reject claims adds weight to appealing a case that is ripe rather than filing a request for continued examination.
Each USPTO office action presents one or more issues that need to be resolved when formulating a response. Therefore, knowing the significance of an examiner’s signatory authority can be helpful when addressing those issues.
For more information, please contact Dennis Parad.