The patent examiner determines the fate of your patent application. In reality, you have no ability to request a different examiner or complain to the examiner’s boss. The only feasible remedy to get around an unreasonable examiner (an examiner that is either unable or unwilling to accept your legitimate patentability arguments) is to file an appeal with the Patent Trial & Appeals Board.  However that is a separate topic.  This article focuses upon the strategic use of examiner credits (awarded to the examiner in the USPTO merit system) to advance your application to the award of a patent.

Examiner’s Credit/Incentive System

I suggest it may be more productive to realize that the examiner is operating on an imposed/rigid production schedule. The examiner is graded on the number of applications that are disposed of, either allowed or finally rejected/abandoned. The examiners are incentivized to dispose of cases as quickly as possible. The examiner is not rewarded for issuing a repetitive series of rejections.

The USPTO system documents all of the examiner’s activities regarding the examination of your application.  For example, the examiner is expected to thoroughly search the prior art the first time. The examiner’s thoroughness and strategy of conducting a prior art search are recorded in the prosecution history.  You (applicant) have access to the examiner’s record of activities.  The examiner’s supervisor and the USPTO quality control organization also have access to this history.   The examination is not to be conducted in a piecemeal fashion.

Also see the article pertaining to Patent Application Flowchart.

Examiner’s First Office Action

Where this article is headed is that the examiner receives the most credit in issuing the first “Office Action”. (If you have read my other articles, you will know that this first action is invariably a rejection of all claims.) But the examiner quickly begins to receive less credit in the issuing follow-up actions. He/she receives less credit for issuing second or third rejections. Remember the examiner is incentivized to promptly dispose of cases. Allowing the application is a method of disposing of a case.

Perhaps it is useful to think of the examiner’s first Office Action as his/her “best shot”.  You must carefully review the Office Action, as well as give careful consideration of the prior art cited by the examiner.  It is time to strategize.  You must organize the best response, including consideration of amending the rejected claims. You should focus on the independent claims.

Examiner Interview

This is when I want to talk to the examiner.  You should realize that it may be to the advantage of the examiner (operating under the USPTO examination credit system) to expeditiously agree to your modified claims.  Your now modified claims should  overcome the examiner’s stated written rejections and thereby be deemed to be allowable. (It is also the time to cleanup any informalities that carried over in the original filing documents.)


The key point is that a cooperative strategy may achieve allowance of valuable claims while allowing the examiner to receive the same credits that he/she would obtain by considering (and rejecting) your formal written response to the first Office Action.

© Law Office of David McEwing PC, 2018


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