C. Wook Pak and Mark D. Nielsen 1
The compact prosecution model has yet to be achieved because examiners, desiring to dispose of an application quickly, tend to give unreasonably broad interpretations to the claim terms in order to allow them to quickly find a reference that can serve as a basis for a rejection.
Although examiners are instructed to give claims their broadest reasonable interpretation pursuant to MPEP section 2111, from our experience, it appears that the examiners may be ignoring the specification and using the broadest possible interpretation of claim language so as to encompass more prior art.
Furthermore, examiners do not appear to adhere to MPEP 904.03, which states that “[i]t is normally not enough that references be selected to meet only the terms of the claims alone . . . but the search should, insofar as possible, also cover all subject matter which the examiner reasonably anticipates might be incorporated into applicant’s amendment.” (Emphasis added.)
To truly implement a compact prosecution model, the examiner should be incentivized to uncover the best prior art reference(s) available in the First Action on the Merits (FAOM) so that a second search would not be necessary based on any amendments. Therefore, if the invention is unpatentable, then the FAOM should demonstrate as much, not the second or any subsequent office action.
One way to implement the compact prosecution model is to change the count system. The current count system does not incentivize examiners to conduct the best search in advance of the FAOM. Under the current model, the examiner can receive a maximum of 2 counts on an original case. This is accomplished by issuing a FAOM (1.25 counts), issuing a final office action (Final) (0.25 count), then issuing an allowance or an abandonment (0.5 count).
Under this system, it appears the examiners are incentivized to issue a Final prior to an allowance. In fact, an examiner may conduct an inadequate search, knowing that after a response to the FAOM, a second search can be done, and a Final issued, so that the examiner receives the extra 0.25 count.
To incentivize examiners to conduct the best search for the FAOM, the Patent Office should implement a count deduction system where the examiner starts with the maximum count, but loses counts with each “unreasonable” action on the merits. For example, an examiner should receive 2 counts for the FAOM. Ideally, the examiner should have conducted the most thorough search and found the best prior art in the first search. The best prior art should also anticipate (in the sense of forecast) the potential claim amendments so that minor amendments are not sufficient to remove the best reference uncovered as prior art.
The applicant can then make his best arguments or claim amendments for consideration. If the amendments and arguments are persuasive, and the examiner uncovers no further art as a basis for rejection, then the examiner issues a Notice of Allowance (Allowance) and keeps the 2 counts. If the amendments and arguments are not persuasive, then the examiner issues a Final and keeps the 2 counts.
If the examiner’s first search was hasty, and a second search uncovers prior art (that should have been uncovered in the original search) as the basis for rejection, then the examiner issues a Second Action on the Merits (SAOM), and 0.5 count is deducted for this application, leaving the examiner with only a maximum of 1.5 counts. This will discourage the examiner from conducting a hasty initial search just to uncover enough art that reads on an unreasonably broad interpretation of the claims. Therefore, the examiner will be incentivized to consider the true scope of the claims based on the specification and the claims, conduct a proper search as outlined in MPEP 904.03, and provide the best art in the FAOM. In addition, the applicant is not penalized by ultimately having to file a request for continued examination (RCE) due to a hasty first search conducted by the examiner.
If the applicant files arguments or amendments in response to the ¬¬¬SAOM that are not persuasive, then the examiner issues a Final and no further counts are deducted, and the Applicant must decide whether to file an RCE. If the amendments or arguments to the SAOM are persuasive and no further references are uncovered, then the examiner issues an Allowance and no further counts are deducted.
If, on the other hand, the examiner uncovers another prior art reference that could have been anticipated based on the specification, then the examiner issues a Third Action on the Merits (TAOM), and another 0.5 count is deducted (now down to a maximum of 1 count for this application) to penalize the examiner for not conducting a more thorough search earlier. The applicant, however, is again not penalized (via having to file an RCE) for the examiner not conducting the best possible search earlier in the prosecution of the application.
If after a Final, the applicant files an RCE, the same count system as an original application would apply, except that the examiner would begin with 1.5 points instead of 2 so as to discourage funneling applications into RCE practice.
As a further incentive to the examiner, to understand the invention thoroughly and completely before conducting a search, the examiner can receive an additional 0.25 count for initiating an interview with the applicant prior to any action on the merits to discuss the full scope of the invention so that the examiner can conduct the best search possible, anticipating any potential amendments consistent with MPEP 904.03 prior to issuing the FAOM. This option would only be available for an original application and not an RCE.
The foregoing sets forth that examiners always start off with the highest number of counts when first examining an application and only risk losing counts in the future for hasty or inadequate examinations. To avoid the uncertainty of whether or not counts will be lost in the future, examiners are incentivized to do the best job they can on the FAOM on the original filing.
- C. Wook Pak and Mark D. Nielsen are attorneys at Cislo & Thomas. This proposal reflects the views of the authors only and not that of Cislo & Thomas.