Changes to the Count System

Patently-O is reporting on a briefing made to the patent examining corps yesterday that includes proposed changes to the count system.  As Prof. Crouch rightfully notes, the changes are incremental.


The upshot is that the changes will discourage examiners from churning RCEs.  Some examiners don’t seem to negotiate reasonably until an applicant files an RCE.  Under the current system, the examiner gets “counts” or credit for handling two applications when the applicant files an RCE.  After a response to the intial Office Action, the examiner issues a final rejection.  Once the applicant files an RCE (granting the examiner credit for a disposal of the first case), the examiner may then allow the application and thereby get 4 counts instead of 2.

The changes to the count system will only grant an examiner 1.75 counts for a first RCE and 1.5 counts for each subsequent RCE.  Thus, the examiner will have more incentive to examine a new application where he can get 2 counts than an RCE, although the case with the RCE still has the benefit of familiarity and previous search by the examiner.


The changes also encourage examiner-initiated interviews.  Examiners are granted an additional hour of non-examining time for each application, which is meant to be used to prepare for and conduct interviews.  As anyone who has prosecuted patents knows, greater progress can usually be made during examiner interviews than by simply ping-ponging arguments back and forth with the examiner.

The other thing that can get very irritating when prosecuting a patent is when you overcome the examiner’s rejection that he has clung to for several Office Actions only to be given a new non-final rejection.  The new system seeks to remedy this situation by granting additional credit and providing additional time for examiners to complete the first Office Action on the merits.  The goal would be to get a high quality first Office Action that includes all rejections that the applicant must overcome to get the application allowed.

Under the current system, an examiner gets 1 count for the initial Office Action and 1 count for a disposal (allowance, abandonment, RCE, etc.).  Under the new system, the examiner will receive 1.25 counts for the first Office Action, 0.25 counts for a final Office Action, and 0.5 counts for a disposal (less for RCEs as discussed above).

Examiner Mistakes

 There is also an initiative to try to change the culture where examiners are reluctant to allow cases.  No examiner will receive an oral warning based on a single clear error in patentability determination, nor shall an examiner be deemed to have failed an improvement period for a single error.  Multiple clear errors of patentability during two or more quarters in a fiscal year will still result in negative consequences to the examiner.

The steps are incremental, but they’re a start.  It may be good to implement small changes, see how they affect the system, and then determine what additional changes will result in further improvements.

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6 Responses to “Changes to the Count System”

  1. Kappos Drops Out of the Chopper Shooting « INVENTIVE STEP Says:

    [...] the recent news on the proposed update to the “count” system, he described the current system as “byzantine.”  The system is recognized by all [...]

  2. New Administration Seeks to Further Limit RCE Filings « INVENTIVE STEP Says:

    [...] new docketing procedure, along with the recently approved changes to the count system, are meant to discourage RCE filings.  For situations where examiners seem to encourage or almost [...]

  3. Reducing Patent Pendency « INVENTIVE STEP Says:

    [...] new PTO Director David Kappos took over leadership of the PTO, he has implemented changes to the examiner count system in an effort to keep examiners from “churning” RCEs.  Examiners now get less [...]

  4. פטנט Says:

    Very interesting.
    Understanding the incentives of the examiners explains a lot about how the system works.
    Is anyone aware of how examiners of other major patent system are rewarded? Specifically, what compensation system is there in the EPO?

  5. Here We Go Again « INVENTIVE STEP Says:

    [...] by making it less advantageous to examiners to churn applications.  This change was implemented by count reform where examiners get less credit for examining RCEs than for new applications.  Unfortunately, it [...]

  6. PTO Fee Proposals « INVENTIVE STEP Says:

    [...] PTO’s count reform efforts to deal with RCE filings has obviously been a failure, such that it now proposes an 83% increase to [...]

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