Imho, patent prosecution is not an adversarial process (until an appeal to the Board) as applicants and Examiners are trying to get to a valid claim scope. After all, no one wants an invalid claim as it is completely worthless.

Unfortunately, the prosecution process becomes adversarial because examiners push for a claim scope that is narrower than what applicants are usually rightfully deserving of because of the “count” and “ding” system. Many examiners are afraid of getting penalized for allowing a claim that their supervisor or Quality Control believes is too broad. Hence, those examiners believe that they run less risk of getting less “dings” if the allowed claim scope is significantly less than what is rightfully justified.

Imho, examiners should get dings for things that are clearly wrong in their Office Actions, e.g., requiring applicants to amend a specification to update or add the related application data, making a rejection that is completely unfounded, not setting forth the required analysis and instead making a conclusory statement, etc. Examiners should also get a half a point or one whole point deducted when they make a clear error in an Office Action… as I suspect examiners often rush to get points and therefore make such errors in haste. Such errors cost applicants significant time and money. Such errors are also likely costly to the USPTO in examiner time (and hence human resources), processing, and metrics by which the USPTO is evaluated.

Throughout my career, I have found very few examiners who believe the prosecution process is or should be adversarial. Newbie examiners erroneously believe prosecution is an adversarial process unless they have a good training supervisor or they have an interview with a practitioner who shows them how applicants/practitioners and examiners can (and should) work together to achieve the objective of strong valid patent claims. Regularly (at least about 90% of my interviews with relatively new examiners whom I had not previously interacted with) the Examiner says something like “wow, I didn’t know that interviews could be like that”. Then they tell me some horror stories of some jerk-of-an-attorney who came in to an interview with guns blazing. I even had a junior associate (who was a former examiner) I was training tell me the exact same thing after we had our first interview on a case together.

Imho, it is the responsibility of practitioners to show examiners that the process need not be adversarial.

Examiners are not attorneys and the majority do not have a legal education. Hence, examiners likely do not know how to read, interpret, and apply case law. I firmly believe that the blame of sub-par patent examinations cannot be placed solely on examiners for being lazy, not following the rules, or not understanding the case law or technology. Instead, USPTO MANAGEMENT should be held primarily responsible (and to a small degree, us practitioners). One cannot blame an examiner who is not properly trained or who does not have the resources to do the job. Based on Office Actions of late (over the past few years), imho, it seems proper examiner training is woefully inadequate. And, imho, the MPEP is a horrible mess of cutting and pasting to the point of incoherency. Regularly, us practitioners are compelled to consult with each other to determine whether we understand and/or interpret the requirements of a given rule correctly. Such consultations should not be necessary. One should be able to read and follow the MPEP like a recipe book. Patents are all about the written word. Thus, it should be easy for the USPTO to provide rules and guidance that are clearly written and concise, just as is required for the patent applications and claims the USPTO examines.

Additionally, as practitioners, we are responsible for using and applying the law and rules of practice for the benefit of our clients. Thus, we also have the responsibility of explaining (to Examiners) why certain laws and rules should be applied to our client’s specific case/facts in a certain way. As such, practitioners are also responsible for properly educating examiners on laws and rules as applied to a given case.

Assuming examiners have the proper training and resources needed to do their jobs correctly, the examiners who continue to do their job incorrectly should be fired. However, I understand that it is extremely difficult to fire a primary examiner because of the examiners’ union, which is also why it is extremely difficult to do any meaningful overhaul of the count/evaluation system in order to improve patent examinations.

Nevertheless, I understand that USPTO Management/Supervisors do not belong to the union and therefore can be more readily fired. Thus, it may be that USPTO Management/Supervisors must be held accountable (and fired) before we see any actual improvement in the average examination by examiners.

FWIW