Overview

  • Patent prosecution involves collaboration between:
    • Patent prosecutors
    • Inventors
    • In-house counsel
  • However, patent quality also depends on the USPTO patent examiner’s work.
  • The USPTO addressed this topic in its Patent Quality Chat (Nov. 14, 2017) titled:
    • “How is an Examiner’s Work Product Reviewed?”
  • The session included:
    • 20-minute presentation by two USPTO Supervisors
    • 40-minute Q&A with external stakeholders
  • Slides and webinar video were made available on the USPTO website.

Two Main Examiner Review Processes

  1. Review within the examiner’s Technology Center (TC)
  2. Review by the Office of Patent Quality Assurance (OPQA)

Technology Center (TC) Review

  • Each examiner has a Performance Appraisal Plan (PAP).
  • Standards vary based on government scale (GS level).
  • Examples of quality standards:
    • Compliance with 35 U.S.C. §112 (GS 5–15)
    • Proper rejection of all rejectable claims (GS 14–15)
    • Proper allowance of claims (GS 14–15)
  • Junior examiners’ actions must be signed by:
    • A supervisor, or
    • An authorized primary examiner.
  • Additional TC reviews include:
    • Quarterly PAP reviews
    • Appeal and pre-appeal conferences
    • Other internal quality initiatives

OPQA Review Process

  • Conducts random compliance reviews.
  • Sample size based on TC workload to ensure statistical significance.
  • Each review takes approximately 4 hours.
  • Uses a master review form to assess:
    • Rejections made or omitted
    • Search quality
    • Restrictions and objections
  • Focus is on the specific office action (not full prosecution history).
  • Reviews may result in:
    • Noncompliant
    • For consideration
    • Pass through
    • “Accolade” (for exceptional work)
  • Feedback includes:
    • Best practices
    • Areas for improvement
    • Positive reinforcement

Key Takeaways

  • Examiner work is subject to multiple internal review layers.
  • USPTO encourages practitioners to:
    • Contact supervisors when issues arise.
  • Despite practitioner hesitation, the USPTO welcomes feedback to improve patent quality.

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