There are more changes to the patent system to report, and we are hopeful.
In our September newsletter, we told you about the ‘count’ system used by the PTO to measure the productivity of patent examiners. In the bad old days (that is, during the last few years of the last administration), examiners had incentive to churn patent applications by arbitrarily rejecting the applications, forcing the applicant to pay a new filing fee and to request that the examiner continue reviewing the application.
The new David Kappos administration at the PTO has taken steps to reduce incentives for the examiner to game the system by reducing the credit that the examiner receives for repeated reviews of an application. The Patent Office Professional Association (the patent examiners’ union) has approved the changes, and those changes will go into effect.
The new administration is encouraging examiners to conduct interviews with applicants early in the review process to identify the issues involved and to identify patentable subject matter, avoiding the need for continued examination of the application. Look for more on early interviews in a subsequent newsletter.
The Kappos administration is also taking steps to reduce the utility of continued examination to applicants. In the past, examiners were required to review requests for continuing examination within two months. In the future, requests for continuing examination will be placed in line for review along with other applications. This increases the incentives for both the examiner and the applicant to achieve a full examination of a patent application early in the process.
We expect that soon most new patent applications will include an interview with the examiner, either in person or by telephone, prior to the first office action.
— Robert J. Yarbrough, Esq.