Only a handful of patent practitioners have seen the inner workings of the United States Patent and Trademark Office. Yet, having an understanding of a patent examiner’s experience at the USPTO can be of great value.
Given time, patent examiners evolve in their understanding on patent laws and procedures, and they adjust their approaches to patent examination according to the lessons they learn through experience. In Episode 52 of the Better Patents Now podcast, “Inside Scoop with Former Patent Examiner Joshua Rudawitz,” listeners gain a glimpse into what it is like to sit on the other side of the table and gain a better understanding of life at the USPTO.
What NOT to Do as a Patent Professional
In Better Patents Now Episode #52, patent attorney Joshua Rudawitz, reflects on his past experience as a patent examiner dealing with patent attorneys and patent agents. When asked about “the worst thing a patent examiner ever did,” Mr. Rudawitz recalls a patent attorney who tried to leverage his client’s poor health to earn sympathy and to help to move his client’s patent application to issuance. While patent examiners are human beings with emotions, it is recommended that patent practitioners refrain from asking their patent examiners to skirt any rules. Instead, rely on arguments backed by patent law and procedure to overcome rejections.
Advice for a More Pleasant Patent Prosecution Experience
The number one piece of advice Joshua Rudawitz provides to patent professionals is to understand that a patent examiner’s hands are often tied by case law and USPTO guidelines when examining a patent application. When USPTO guidance requires patent examiners take specific actions in particular situations, patent examiners are required to stick to their training. Mr. Rudawitz recalls in the podcast a telephone interview where an inventor took a rejection personally – as a result of that experience, he encourages patent practitioners to try to understand that disagreements between applicants and the USPTO are the reason for the appeal process, and he recommends educating patent clients on the amount of discretion patent examiners are given throughout prosecution to avoid emotional reactions.
Evolving as a Patent Examiner
Perhaps one of the most important takeaways from the Rudawitz interview is that patent examiners go through a number of career phases. When Mr. Rudawitz began his career at the USPTO, his degree in mechanical engineering landed him a position in an art unit that deals with a variety technical subjects ranging from vehicle hitch attachments to robots. The patent office does not provide any technology-specific training, so the nature of a patent examiner position is to learn about new technology as it comes into the patent office. The expectation is that USPTO examiners will figure out how to understand inventions and interpret information on the fly, which means much of an examiner’s technical knowledge is dependent on the type and number of patent applications they have reviewed.
It is also discussed that patent examiners are not given much discretion in the early stages of their careers – supervisors and primary examiners have most of the say in what is patentable. Newer patent examiners can review patent descriptions and claims, conduct patent searches, and advocate for patent allowance, but allowance is ultimately not their decision. Patent examiners are then gradually given more autonomy and independence as they accrue knowledge and gain a sense of what should or should not be allowed. This knowledge is priceless to patent practitioners who rely on patent examiner statistics to make patent prosecution decisions.
Patent data from the early stages of an examiner’s career are often more indicative of a supervisor’s opinion than that of the actual patent examiner. Additionally, the need for new patent examiners to have their work reviewed and approved by supervisors can impact a patent examiner’s average patent prosecution times early in their careers. Patent professionals should be aware of statistical biases inherent in early-stage patent examiner data, and may want to consider looking to predictive patent metrics that account for bias as other circumstances surrounding patent examiner decisions. Currently, PatentAdvisor ETA™ is the most predictive patent prosecution metric available, which incorporates an examiner’s experience level, decision trends, and much more to produce a truly reliable patent prosecution tool.
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