Proposed Changes to the Count System
By: Michael A. Leonard II
The United States Patent and Trademark Office (USPTO) uses the count system, measured on a bi-weekly basis, as one way to facilitate a certain level of patent
Examiner productivity. The USPTO defines the count system as the methodology for determining the time a patent Examiner has to complete a patent examination and
how much credit is given for each stage of the examination. The more experienced the Examiner, the higher the number of counts that the Examiner is required to produce. On
September 30, 2009, USPTO Director David Kappos released a series of proposed changes to the count system. To view the USPTO presentation, click
Here.
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The proposal seeks to provide Examiners with incentives to address issues early in the examination process and to reach out to Applicants. The proposal also seeks
to provide more overall time for Examiners to examine each application and more time for each First Office Action on the Merits (FOAM). FOAMs include the first
Office Action during prosecution as well as every first Office Action following a disposal (such as a Request for Continued Examination (RCE)). The proposed changes
also offer Examiners time credit for Examiner-initiated interviews and diminish credit for filing RCEs. Beneficially, the proposed changes seek to reduce Examiner
reluctance to allow applications.
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Previously, for each iteration of prosecution (typically including a first Office Action, a final Office Action and a disposal), Examiners received 2.0 counts - 1.0
counts for the first Office Action and 1.0 counts for the disposal (no counts for a final Office Action). This 2.0 count credit was the same regardless of whether
the current iteration was the first iteration, the second iteration, or any subsequent iteration. Under the proposed count system, Examiners would receive 2.0 counts
for the first iteration (1.25 for a first Office Action, 0.25 for a final Office Action and 0.50 for a disposal). However, for the second iteration, this credit would
drop to 1.75 counts (1.0 for a first Office Action, 0.25 for a final Office Action and 0.50 for a disposal). For any subsequent iteration, only 1.5 counts are received
(0.75 for a first Office Action, 0.25 for a final Office Action and 0.50 for a disposal).
These changes are intended to provide more incentive for Examiners to work with Applicants to more quickly reach final disposals of applications, either by allowance
or abandonment. The diminished credit does not appear to be very substantial, so in practice, it remains to be seen whether such a system would truly encourage
Examiners to more quickly reach a final disposal. After all, the first FOAM in a case generally requires considerably more work than subsequent FOAMs.
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The proposed changes also implement an Examiner-initiated interview program. The program grants Examiners non-examining time for substantive examiner-initiated
interviews. Examiners receive one hour of non-examining time credit for conducting the interview and preparing the post-interview documentation. This program is
interesting as it seems to be intended to facilite direct collaboration between Examiners and Applicants to find allowable subject matter. This presents a welcome change
from the perspective of many practitioners who feel that the patent prosecution process has become increasingly adversarial in recent years.
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It remains to be seen whether the proposed changes to the count system will be successful if they are ratified by the Patent Office Professional Association.
Regardless of the outcome, this proposal by Director Kappos is a welcome attempt at streamlining the patent system and making the system more cooperative and
beneficial for Examiners, Applicants and patent attorneys alike. Hopefully, the program will achieve its laudable goals and improve the patent system.