David Kappos, the newly-sworn Director of the U.S. Patent and Trademark Office (‘PTO’), is moving quickly to place his mark upon the agency. In one of his first acts, Director Kappos launched an internal PTO task force to change fundamentally the way that patent examiners review patent applications.
At present, the PTO measures the productivity of patent examiners using piecework criteria known as the ‘count’ system. The ‘count’ system is crucial to examiners, who are evaluated, promoted or disciplined based on productivity. As currently implemented, the ‘count system’ drives arbitrary and wrong action on the part of patent examiners and unnecessarily costs patent applicants time and money.
An examiner earns a ‘count’ when the examiner issues a first office action and when the examiner disposes of an application. The productivity of each examiner is measured by how many ‘counts’ the examiner earns during each two-week period. The ‘count’ requirements are set so that the examiner has a very limited period of time to review an application. To meet his or her count requirements, the examiner has incentive to deny an application so that the applicant abandons the application (generating a ‘count’) or the applicant files a request for continuing examination (generating a ‘count’). Although an examiner earns a ‘count’ for allowing a patent application, the allowed application is subject to a quality review by other PTO personnel and the examiner is subject to denial of promotion or other adverse consequences if the examiner erroneously allows too many patents.
Director Kappos stated that his goal is to provide examiners with enough time to review applications and to create incentives for efficient prosecution. We hope that Director Kappos is successful in meeting his goal and that incentives for arbitrary and wrong examiner decisions are eliminated.
— Robert J. Yarbrough, Esq.