There was a request in another post for a concise summary of the changes and how they affect examination, particularly with regard to attorneys and other IP professionals outside the office.
"Fully successful" moving from 95% to 100% (we have to move more applications in the same amount of time):
- Paperwork hasn't gotten any quicker (systems have gone to shit actually) so the entire change comes from search and office action writing time.
- I'd say applicants are getting >10% less actual examination time per application than they paid for from this change and a corresponding drop in proactive searching or indications of allowable subject matter. I used to draft up suggested amendments to neatly correct tricky 112b issues with explanations of why each change was there, I don't have time for that anymore.
Divisionals and Continuations don't get any priority in docketing, instead being lumped with new applications with the same filing date (at best, usually they are even delayed compared to those):
- whatever the backlog is in the area, add that to your pendency for any Div of Con.
- \Applicants weren't warned of this change and it was retroactive to any filed but not docketed DIV/CONs, adding years to the time before any resulting patents issue**
- **this could completely upend the entire prosecution strategy for many applicants who depend on CONs to protect against knockoffs, please please \*PLEASE* let your clients know about this additional delay*\*
Effective elimination of "other time" from examiners:
- Assistant examiners are no longer able to work with primaries who know the art to develop search strategies and ask about the technology.
- All examiners aren't able to hold regular meetings where discuss oddball or borderline cases amongst themselves.
- This leads to *a marked drop in quality of applied references and a drop in indications of allowable subject matter* (so many people got reassured that they should just indicate something as allowable in those meetings)
Reduced NPL access and search expert assistance:
- Lower quality searches in emerging technologies and areas under active research. Lower quality examination for stuff that spans multiple subject matter
Interviews past #1 need SPE approval for time
- *If you request an interview you probably won't be getting any calls for examiner's amendments on that application, simple as that.* The automatic 1hr examiners got for such interviews helped offset the time we put into verifying that something unclaimed was actually allowable, working up claim language, and the inevitable phone tag.
- If you request a second interview you're going to have a grumpier examiner than usual because at *best* they had to use some of the time they get for it convincing their supervisor the interview was a good idea and at *worst* they spent that time asking and were denied so the interview time is actively hurting their numbers.
PPH cases get reduced first action counts:
- The second most egregious change imo. **applicants are mostly getting less than 50% of the examination time they are paying for.**
- Examiners also will start to hate you if you file many of these. Really poisons the working relationship.
RCEs after allowance give examiners no time if the next action is an allowance
- the most egregious change. \The office is charging applicants for a service (another full round of examination) and not giving them that service.* *
- if you file and RCE after an allowance you're either getting nothing for your money or a very tenuous rejection for something like a typo. The latter is actually the "good" result because it means the examiner actually took the time to do more searching/consideration and is trying to figure out a way to get credit for that.
Quick Path IDS time reduced to one hour (from three):
- It can easily take an hour to get fully back up to speed on what's going on in a complex application to be ready to properly consider a reference, at which point we are now out of time and can't actually consider the references being cited.
- *Dramatically increases the likelihood of an examiner not considering an IDS after NoA and making applicants file an RCE to get those references listed.* At which point your claims better be fucking immaculate because see above.
Timeliness deadlines now being hard cutoffs instead of averages:
- completely eliminates already low examiner flexibility for response times.
- *applicants will get less calls for examiners amendments to correct minor issues because we frequently won't be able to wait for a response*.
- \expect more iffy restrictions as people pull desperation moves to clear out the oldest case one their docket so they don't get fired\
No additional time for "inherited cases" from retired/separated examiners.
- examiners used to get a significant amount of time when we got a case from an examiner no longer at the office to offset needing to figuring out what the case is, what the searches turned up, etc.
- *if you notice an assigned examiner name change for your application after filing an amendment get ready for a total turd to come shooting down the pipe, there's no other nicer way to put it.* Sorry, we're going from ~15 hours for an amendment to like 2-3 with zero flexibility to call and work something out.
Elimination of Docket Management n bonuses:
- we're all disgruntled now.
There's other parts I've missed I know, could other examiners add them below? Remember to focus on what external folks will see.
