U.S. DEPARTMENT OF COMMERCE,

PATENT OFFICE, Washington, D.C., October 11, 1972.

To: Patent examining directors, supervisors and examiners.
From: Office of deputy assistant commissioner for patents.
Subject: Individual examiner expectancies.

For purposes of uniformity and in order to avoid possible inequities it is deemed appropriate to clarify some aspects of the practice in the patent examining corps with respect to individual examiner production expectancies. The guidelines stated herein were established after consideration of the views of the Examining Group Directors, SPECO and POPA.

Production expectancies (hours per balanced disposal, hours per disposal, and hours per first action) for an individual examiner shall not be changed unless the change is based on the grant of signatory authority, other changes in degree of supervision (as indicated by grade changes through grade GS-13), the official recognition of an examiner as an expert, senior examiner, or generalist, or a change in the examiner's docket, examining technique, practice, or procedure. Exceptions may be made where there is clear justification, as for example error in docket complexity. Where an examiner requests a change based on an error in his expectancy assignment or where the Supervisory Primary Examiner finds such an occurrence, changes may be effected provided there is mutual agreement between the Supervisory Primary Examiner and the individual examiner involved. If no agreement can be reached, the final decision will be made by the Examining Group Director. All changes in expectancies of individual examiners, whether by exception or otherwise, shall be made after consultation between the Supervisory Primary Examiner and the involved examiner and be confirmed in writing.

Although expectancies will be changed upon the grant of a quality step increase in accordance with the standard set out in the Criteria for Incentive Awards (August 25, 1972), the receipt of an ordinary within grade or recognition for masters level will not be the basis for a change in any examiner's production expectancies.

It is apparent that variations in productive performance are logically a function of supervision and relaxation of supervision generally results in increases in examiner grade levels up to grade GS-13. It should also be recalled that the signatory program was originally established on the theory that the examiner's productive performance with these authorities would result in increased production. Further consideration must reasonably be given to the additional credit items wherein the Civil Service Commission Standard for the Patent Examining Series, GS-1224-0 states that these "positions are unique positions whose incumbents possess extraordinary personal qualifications, capacities . . .” Accordingly, using grade GS-12 as a base, productivity expectancies shall be calculated using the following factors:

These guidelines shall become effective at the beginning of the first pay period after January 1, 1973.

WILLIAM FELDMAN,

Deputy Assistant Commissioner.

Group

110.

120.

140.

160

170.

210.

220.

230.

240.

250.

310.

320

330.

340

350.

ATTACHMENT C

RANGE OF HOURS PER DISPOSAL EXPECTANCY FOR GRADE GS-12 BY GROUP

Hon. PHILIP A. HART,
U.S. Scnate,

Washington, D.O.

DEAR SENATOR HART: During the hearing on September 12, 1973, before the Subcommittee on Patents, Trademarks and Copyrights of the Senate Judiciary Committee, you asked the Department of Commerce witnesses how the pendency time for patent applications is calculated and how the reduction in pendency time over the last few years has been achieved. Your questions related to statistics the Patent Office provided in Appendix A of our letter to you dated August 31, 1973.

In reviewing Appendix A, we have discovered an error on page 9 in the number of patents issued for fiscal year 1968. We are enclosing a substitute copy of page 9 that we would like to have appear in the printed record. Even with this correction, however, the information in Appendix A alone does not provide an answer to your questions. Accordingly, we are submitting additional data in the table attached to the present letter which will explain the reduction in pendency.

Pendency of a patent application is defined as the time period occurring between the day an application is filed in the Patent Office and the day the same application is issued as a patent. The Patent Office calculates the average pendency time by averaging the pendencies of a representative sample of patents issued on a given date.

The Patent Office expects to be able to reduce the average pendency of a patent application to 18 months by the end of fiscal year 1976 in order to provide more timely patent protection for the inventor and earlier disclosure of patent technology to the public. As shown in column 2 of the attachment, average pendency decreased from 37 months at the end of fiscal year 1964 to 24 months at the end of fiscal year 1973.

Column 3 of the attached table shows the output of the patent examining operations over the period 1964 to 1973 measured in terms of "disposals". Total disposals represent the sum of applications allowed and applications abandoned each year. By comparing column 3 of the table with the number of applications filed, shown in column 4, it can be seen that the Patent Office has disposed of more applications than it received in every year since 1967.

Despite the fact that the number of examiners in the Patent Office has remained essentially unchanged since 1968 (see Appendix A and column 6 of the attached table), an important factor contributing to the recent reduction in pendency has been increased funding for the examining staff. This was particularly true during fiscal year 1973. Because of difficulties in recruiting additional examiners, the Patent Office during 1973 used funds equivalent to 122.5 examiner man years for paid overtime for the existing staff of over 1,100 examiners. Accordingly, when the overtime is taken into account, a significant

increase in the effective examining staff has occurred (see column 10 of attached table). Another factor contributing to the increased number of disposals has been a significantly lower rate of turnover in the examining staff since 1970. (See column 13.) The more experienced staff has been able to dispose of a greater workload.

In addition to the effective increase of the examining staff and the retention of more experienced examiners, a number of procedural changes instituted since about 1964 have contributed to the reduction in pendency. These changes have saved pendency time not by reducing the time devoted to examination but rather by shortening various delays inherent in the examining process. One major change was shortening of the period permitted for an applicant to respond to an office action from six months to three months in nearly all cases. Another change concerned the order in which pending applications were taken up for examination. Examiners were directed to give priority to applications with the oldest filing dates.

A further change required that the examiner's second action on an appliction be made the final action when this could be done without depriving the applicant of a fair opportunity to present his case. Still another change encouraged examiners to hold interviews with applicants or their attorneys, thereby eliminating some of the time required for back-and-forth written correspondence.

As a result of these revisions, a large inventory of amended applications on hand was reduced, thereby having an immediate effect in cutting the average pendency time. Moreover, these changes have resulted in shortening the time for prosecution following the first action. Interviews have frequently led to a better and earlier understanding of the issues involved in a particular application, and hence an earlier conclusion of prosecution.

Another change contributing to shorter pendency, made by the Congress, was amendment of section 151 of the Patent Cobe in 1965 to shorten the period for paying patent issue fees from 6 months to 3 months. (The Administration's patent bill that was forwarded to the Congress on September 27, 1973, would provide for further shortening of this time period.)

An administrative improvement within the Patent Office during the last year that has contributed to shorter pendency is elimination of a backlog in the Reference Order Section, a clerical support unit that supplies copies of patents cited by examiners to be mailed to the applicant. Formerly delays of 3 to 4 months existed in this operation, and currently delays have been reduced to a maximum of 1 month.

We hope the foregoing information provides a satisfactory answer to your question. Please do not hesitate to call upon us if you desire additional information.

Mr. NASH. My particular question at the moment is whether or not if the examiner on his first action grants or rejects an application, does he get more weight for disposing of something the first time around in your formula than if he were to look at an application a second or third time after receiving the additional information from the applicant?

Mr. TEGTMEYER. You can make various analyses of the goals program. We do not feel there is any tendency in the goals programs, as it has been established, to lead examiners to issue patents on the first action any more than any other action, quite independently of the goals program. We have encouraged examiners to isolate the issues in patent applications as early as possible. We encourage them to cover all the matter on a first office action. We have a program by which examiners can, by telephone interview, contact the attorney to determine whether or not some amendments to the claims could be made which would make them allowable and which would permit a first action allowance. In the technical sense, it is really not a first action allowance if you look at the various steps that are taken before the allowance is made.

Mr. NASH. You mean via a telephone conversation an examiner can be satisfied to issue a patent application?

Mr. TEGTMEYER. The examination can only be satisfied by examining the application filed.

Mr. NASH. Let me rephrase the question I am trying to get an answer to. I know I have not studied the formula. I never knew it existed.

In that formula, with regard to the manner in which it is weighted, without the reason for it, just the fact, is it weighed in such a way that more credit is accorded the examiner if he disposes of an application, be it granting it or rejecting it, the first time around rather than after a second or a third office action?

Mr. TEGTMEYER. Every application receives both a first action and, at some point, a disposal. Therefore, an application issued on the first action receives no more credit than one that is issued on any other action. Accordingly, the formula cannot be definition-the definition you have given at least-give any more weight and credit to an examiner because he issues it on a first office action.

Mr. NASH. A first office action gets no more weight accorded than a second or third office action?

Is that right?

Mr. TEGTMEYER. In respect to any particular application, there is always a first office action. There is always a disposal. Therefore, an application that is issued on the first office action, as opposed to one issued on the second office action, gives the examiner no more credit than the one issued on the second action.

Mr. NASH. Where is the break point? Third action?

Mr. TEGTMEYER. There is no break point. In each case the examiner gets the same amount of credit over the whole period of examining any particular application, no matter on what action the allowance for disposal is achieved.

Mr. NASH. I am not sure if I fully understand what you have been telling me. I will certainly read the information supplied for the record. Maybe we may decide to seek further clarification.