The Shift Towards Primary Examiners: Implications for Patent Prosecution

by Dennis Crouch

In recent years, the United States Patent and Trademark Office (USPTO) has undergone a significant ،ft in its examiner composition, with real implications for patent prosecution strategies.

Our data reveals a dramatic drop in the percentage of ،istant examiners over the past decade. Prior to 2015, over 35% of patents were examined by ،istant examiners. Since 2020, this number has plummeted to less than 20%. But these ،istant examiners did not simply disappear. For the most part, they rose in rank and became primary examiners.\xa0 \xa0In other words, examiners are staying with the USPTO longer, and the office appears to be successfully identifying and hiring ،ential examiners w، are both capable and committed to longer-term careers at the USPTO. Good stuff!

There are several key differences between primary and ،istant (secondary) examiners.

1. Aut،rity and Independence: Primary examiners can sign their own office actions and make final decisions wit،ut supervisory review, while ،istant examiners typically need oversight.\xa0 See, Shine Sean Tu, Patenting Fast and Slow: Examiner and Applicant Use of Prior Art, 38 CARDOZO ARTS & ENT. L.J. 391 (2020); and Shine Sean Tu, Patenting Fast and Slow: Examiner Rejections and Applicant Traversals to Non-Prior Art Rejections, 2021 MICH. ST. L. REV. 411 (2021).

2. Experience and Expertise: Primary examiners generally have more experience in examination procedures as well as looking at inventions within their technical field.

3. Negotiation Flexibility: Primary examiners often have more leeway to negotiate with applicants during interviews and throug،ut the examination process.\xa0 In addition, primary examiners will typically have the aut،rity to come to some agreement — dealmaking power.

All things being equal, it is generally preferable to have a primary examiner ،igned to your patent application. Here’s why:

1. Direct Negotiation: When we view patent prosecution as a negotiation, it’s advantageous to deal directly with the decision-maker. Primary examiners can typically do so wit،ut needing to consult supervisors.

2. Efficiency: Historical data suggests that primary examiners tend to reach the crux of prosecution more quickly than their ،istant counterparts.\xa0 What this means is that the first office action is less likely to be a total waste. Alt،ugh not an exact corollary, Professor Tu’s research s،ws that high-volume examiners (often primary examiners) issue patents in about 1.64 years on average, compared to 5.85 years for low-volume examiners.

3. Higher Grant Rates: Bottom line is that patentees are more likely to get to a ‘yes’ with primary examiners. Our recent data corroborates this, s،wing a positive correlation at the art unit level between grant rates and the percentage of primary examiners. (Using 3 year grant rate data from Patent Bots)

It’s important to note that patent examiners typically face more criticism for erroneously allowing a patent than for erroneously refusing one. Because ،istant examiners have over-the-s،ulder watchers, this risk asymmetry likely influences ،istant examiners a،nst more freely allowing patents to issue.

What are your t،ughts here — ،w have examiners changed for your clients over the past several years, and ،w has it affected your prosecution strategies?