Study: Experienced Examiners Allow More, Cite Less
In what is sure to be an oft-cited paper in the "Great Patent Reform Debate", professors Mark Lemley and Bhaven Sampat have brandished their magnifying glasses on examiner processes at the USPTO to see if certain examiner characteristics had statistical effects on the examination process. Titled "Examiner Characteristics and the Patent Grant Rate," the paper finds that, with regard to PTO "patent quality," the effect of Office experience may be overblown, and more answers may be found in the HR department than on the Senate floor:
With regard to examiner experience, the paper pulls no punches:[W]e show that there are important differences across patent examiners, and that these relate to the most important decision made by the USPTO: whether or not to grant a patent. In particular we find that examiners differ in significant and important ways in their experience and the depth of their prior art searching, and that these examiner characteristics have qualitatively and statistically significant impacts on whether a patent application is granted.
The results are not encouraging as a public policy matter, because they suggest that the decision to allow or reject a patent application may not be driven by the merits of that application, but rather by the luck of the draw. At the same time, they suggest that human resource policies and incentive structures at the USPTO could affect patent grant rates, an important finding amidst growing concern that it grants too many "low quality'' patents and is in need of significant reform
And, lest anyone think this is the primary problem with software patents and the USPTO, the paper provides the following:[W]e find that more experienced examiners are significantly more likely to grant, and, conditional on experience, examiners that conduct more intensive prior art searches are least likely to grant.
Taken alone, the result that more senior examiners are more likely to grant could suggest that they can more quickly figure out what is patentable in an application. But our data on prior art citation patterns do not support that conclusion. The finding that more senior examiners systematically cite less prior art reinforces the inference that senior examiners are doing less work, rather than that they are merely getting it right more often than junior examiners. And the fact that seniority is correlated with more first--action allowances is also inconsistent with the idea that more experienced examiners are simply negotiating the applicant to a narrower, patentable outcome; in the first--action allowance cases there is no negotiation at all . . . The tenure system, the count system, and examiner recruitment and retention policies should be a more prominent part of current patent reform deliberations.
[T]he computer industry had by far the highest percentage of new examiners: moreRead/download a copy of the paper here.
than 60 percent of examiners in that art unit had less than a year of experience, compared with less than 20 percent in mechanics and chemistry. In our prior paper, we found that the computer industry had a surprisingly low grant rate: lower than any other industry. At least some of that result may be explained by the prevalence of new examiners in that industry.
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The good professors might like to take a look at Examiner processes within the EPO, and then compare that with their USPTO findings. In the EPO, every application is handled by a single Exr, but no case is accepted or refused till two equal rank colleagues have signed up to the work (and the ratio decidens) of their colleague. No deference, because those Exrs come from different countries. Scrutiny of quality comes, post-issue, when an opposition comes in, and is handled by that same primary examiner. This time, two new colleagues work together on the case, and pass judgement on the pre-issue work of the primary. After 30 years of these work practices, we have 1) pride in one's work 2) awareness that it will go under the microscope when there is an opposition, and 3) Esprit de Corps. Nice carrots and recognisable sticks, without use of policemen or disposal point tools. Meanwhile, back at the USPTO.................
As usual, Lemley draws his conclusions not from his data, but from his lack of real world experience, and lack of knowledge about how things work in the real world.
A more senior, more expert person in any field thrashes less. The expert zeros in on the most relevant issues, clears them up and moves on. The experienced examiner is somewhat less likely to overlook the key language in a claim that establishes patentability.
The tyro (a) has less judgment, and less confidence, and therefore has to establish a bigger record, (b) under current PTO management, has almost no discretion to allow an application, unless the application is appealed, or the examiner builds a record establishing extraordinary diligence, (c) is more likely to overlook key facts.
These two factors work the same way in either the public or private sector. For example, my replies to Office Action are much shorter than they were at the beginning of my career. Less care? No, more efficient choice of what to say.
The failure to consider these factors is a huge hold in the paper, that renders the "conclusion" at the end of Lemley's section 5 and list of hypotheses in section 7 just totally bogus.
Haven't read the Paper but the statement "If Exr cites fewer references, that means he/she's doing less work" is outrageous. Has nobody told the good professor the apocryphal tale of the expert, called in to find out why the huge and complex machine isn't working. After some hours of walking round the machine, quietly poking, prodding and listening, the expert places a white chalk "X" on one particular component of the machine. "There lies your problem" says the expert, "and here's my invoice". "What. All that money for one little chalk mark" exclaims the exasperated customer. Experienced PTO Examiners cite fewer references because they only need the best art, ie just one document. After all, per application, there is only one alleged contribution to the state of the art, right? How many references do you see on an EPO search report? I'll tell you. Far fewer than in a USPTO case. There isn't any dispute, that EPO search reports are top quality.
But maybe, not having read the Paper, I've missed something?
Regarding the statement that "senior examiners are doing less work," it is true that senior examiners have less time to do their work in to make production. It really could be somewhere inbetween the two extremes: that the examiner is so much better than the new hires and so cuts right to the point or that he's only as good as the new examiner but gets the work out the door ASAP so he can keep his job (and I'm sure this varies from examiner to examiner).
I agree with anonymous. I do not see a direct coloration between less cited means less work.
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