Patent examiners have an extremely hard job. They’re given a patent application—which could be anywhere from a page long up to hundreds of pages, with patent claims ranging from a couple sentences to pages of description—and expected to understand the technology behind the application, look for any possible examples of Prior art is the knowledge in the field of a patent that was publicly available before the patent was filed., describe how the Prior art is the knowledge in the field of a patent that was publicly available before the patent was filed. anticipates or renders obvious each and every limitation of the claim, and communicate with the patent applicant about their application.
And, on average, they have to do all of that in just 19 hours.[1. In contrast, an attorney defending a client accused of patent infringement might spend dozens or even hundreds of hours just on searching for Prior art is the knowledge in the field of a patent that was publicly available before the patent was filed.. Defendants who assert invalidity aren’t saying the patent examiner wasn’t competent—they’re saying the examiner’s job is hard and examiners can miss things even when examiners are doing their job properly.]
How Much Time Do Patent Examiners Get?
The patent examiner time system, called the “count system”, is complex. But, at the simplest, let’s take an examiner who’s expected to complete the basic 40 hours of examination per week.[2. That’s the baseline amount, but might be reduced if the examiner has certain other responsibilities or training that aren’t considered countable time.] That basic expectation is then adjusted based on two factors—the complexity of the technology involved, and the seniority of the examiner.
Every patent application is classified, based on the technology at issue, into an art unit. And each art unit has an associated complexity value, expressed as a number of examining hours per “count.”[3. Art unit complexities range from 6.9 hours per count at the low end in compound tools up to 15.8 hours per count at the high end for artificial intelligence, depending on the technology.]
As an example, let’s take Examiner Gordon, an examiner in the art unit devoted to fishing lures.
The Patent Office assumes that one “count” in the fishing lure unit is equal to 8.8 hours of time. So, Gordon is expected to complete 4.54 counts each week. A first office action—understanding a new application, researching Prior art is the knowledge in the field of a patent that was publicly available before the patent was filed., and responding—is measured as 1.25 counts. That means the basic expectation for a fishing lure examiner is 3.63 first office actions each week.
In contrast, an immunotherapy examiner—Examiner Allison—is assigned 12.95 hours per count. Allison is expected to complete 3.08 counts per week, or 2.47 first office actions.
But that’s not the whole story. There’s also an adjustment for seniority.
If an examiner is just starting out, they might be a GS-7, and their output expectation is adjusted by a factor of 0.7. But a A patent examiner who is fully authorized to sign office actions (signatory authority) regarding patentability. A patent examiner must go through multiple review processes to become a primary examiner., a GS-14, has their expectation adjusted by a factor of 1.35.
So at the start of his career, Examiner Gordon was expected to complete 2.54 first office actions each week, but by the end, he’s expected to complete almost twice as many—4.9 first office actions each week.
Similarly, Examiner Allison starts out expected to complete 1.73 first office actions and by the end is expected to complete 3.33 first office actions.
Turning Counts Into Hours
Now, if we go all the way back to our 40 hour work week, we can figure out how many hours an examiner spends on examining each application.
Junior Examiner Gordon spends 40 hours a week to produce 2.54 office actions. That’s 15.74 hours per office action. But Senior Examiner Allison spends 40 hours a week to produce 3.33 office actions. That’s 12.12 hours per office action. Twelve hours, to review, research, and decide if an immunotherapy patent should be granted. The average American spends 19 hours each week watching television—50% more time than a senior immunotherapy examiner is provided to determine the patentability of an application.
Experienced examiners are almost certainly better at examining patent applications than junior examiners. But can they do the same job in half the amount of time? And do they get enough time even at the start?
There’s evidence the answers are no.
Examiners Don’t Get Enough Time, And It Affects Patent Quality
Professor Frakes of Duke and Professor Wasserman of UT-Austin studied exactly this issue. Controlling for other variables, they found that the decreased examination time associated with increased seniority corresponded to significant increases in grant rate.
For example, a GS-14 examiner was 20% more likely to grant an application than a GS-7 examiner. This grant rate increase was not a result of increased experience, as the study controlled for that—these grant rate increases are due to the grade increases, which come with time allocation reductions.
The Patent and Trademark Office, informally used interchangeably with USPTO. Should Give Examiners More Time
So, all other things being equal, presented with a given patent application in a given technology, an examiner who gets more time is less likely to allow the application than an examiner who gets less time. Being provided with less time to examine patents results in more patents being granted that probably shouldn’t have been.
The Patent and Trademark Office, informally used interchangeably with USPTO. hasn’t had a comprehensive reform to their examination time system since the 1970s. In 2016, they started gathering data on examination time, but with Director Lee’s departure, the initiative appears to have stalled.
Director Iancu has a perfect opportunity to complete the time study and increase examination time allocations in order to make sure that the U.S. patent system produces “high-quality IP rights that give owners and the public alike confidence in those rights.”