Senior Patent Analyst

Our company deals with Computer Software technology (G06). Yes there is a difference. In established technologies (e.g. SOA) the quality is good, however in more complex technologies (e.g. CEP) the quality varies considerably depending on the individual examiner - generally only average requiring multiple office actions before the examiner understands the technology being presented. Frequently examiners fall back on combining prior-art references purely by keyword / phrase association without understanding the underlying concept of the application..

Currently many examiners / examining divisions revert to 101 rejections because of lack of understanding of a technology / application. Experience has shown us that this takes multiple office actions and even appeal to overcome / correct.

Recent improvements in examiner interviews are helping us to educate examiners and avoid unnecessary office actions prompted by lack of understanding.

Fast tracked applications generally get a better quality examination.

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Quality in complex technologies

Do you perceive a difference in the quality of examination performed in complex technologies compared to less complex technologies? If yes, which do you perceive as higher quality and why? In what aspect(s) is the quality of examination higher?

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Estimating time for prosecution

What factors do you consider when estimating the amount of time needed to take various steps in prosecution, such as preparing responses to Office actions or preparing for interviews? In particular, if you prosecute applications in a variety of technology areas, how do those factors vary among the technologies?

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Changing complexity of prosecution

Are the applications you prosecute more or less complex than in the past, e.g., 10 years ago? What factors contribute to the increase or decrease in complexity? Do you believe the increase or decrease in complexity has affected the amount of time it takes to prosecute the applications? If so, by how much? Do you believe the increase or decrease in complexity has affected the quality of examination? If so, how?

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Allocating Time for Examination Activities

In order to increase the quality of examination, do you believe that an increase in the time allotted for examination should be designated for specific activities, such as interviews, or left to the discretion of the examiner? What activities would you prioritize and allocate more time to?

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Unessential portions of office actions

Are there any portions of Office actions which you feel do not add value or quality to the examination? If yes, what are they?

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Non-Examination Activities

What other activities beyond examining, such as research or training, could examiners spend time on that would add value? Why do you believe these activities could add value?

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Cost, pendency, and time

While the focus of this request for comments and the roundtables is to find the appropriate amount of time for examination, cost and pendency are also contributing factors. Do these factors raise a concern that should be considered?

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Request for Comments on Examination Time Goals

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