As we have said many times, the majority of USPTO examiners are reasonable, hard-working, scientists and engineers trying to do their best to properly examine applications, including rejecting applications that do not meet the statutory requirements and allowing those that do. It is a tough job, and often a thankless job, where often mistakes are highlighted in hindsight. At the same time, it is well documented that there is significant variability among examiners, even within the exact same technology area.
In this way, examiner statistics can be extremely helpful to patent applications in forming strategic prosecution decisions. However, these examiner statistics sometimes do not differentiate sufficiently among examiners with similar statistics, but very different approaches, such as a tough examiner who is particularly good at their job and an unreasonable examiner intent on wearing down an applicant. Both exist, and both might have low allowance rates and/or long prosecution times - yet they are different.
Tough examiners are sometimes just very good at finding prior art, and very keen to form rejections with intelligent combinations, supported by evidence, that actually address all claim limitations with a broad, but still reasonable, interpretation. At the same time, tough examiners might be very helpful in clearly identifying where patentable subject matter exists. There is no magic bullet in dealing with tough examiners, but it never hurts to have a robust specification and to take extra care in making every response count. Sometimes the applicant ends up with less scope than they deserve (or no scope at all), and prosecution can be long. At least the examiner is taking pride in their job. Whether all of this extra effort is really worth it for every application, though, is an open question. You can take solace that there is some regard for merit with tough examiners.
On the other hand, there are unreasonable examiners (or supervisors) who game the system, hope to wear applicants down so that they never obtain any protection for their invention, regardless of the merits. While a minority, they exist. Sometimes they aggressively apply restrictions not only on the first action, but to every amendment. Sometimes they reject every possible element under Section 112 and try to create ambiguity through misinterpretation where none exists. Then come the prior art rejections, usually very poor and slowly getting better (or worse) as they repeatedly perform more searching hoping to draw out prosecution and force as many RCEs as possible with as little work as possible. There is no dealing with these examiners - interviews are futile. There is no possibility of transferring to another examiner (unless you get lucky with a CIP/DIV strategy). These examiners know clients have limited budget and, more often than not, clients (especially smaller clients) will give up.
The USPTO knows who these unreasonable examiners are, but there seems to be little to no consequences for them. They are a minority, but create outsized trouble for innovators.
Some strategies for unreasonable examiners are outlined below:
Always traverse unreasonable restrictions - use this blog to find arguments against them and petition - you can win.
Get ready to appeal early and don’t despair when prosecution is re-opened.
Use every dependent claim to your advantage in the first response.
Maximize not only amendments that help with the prior art, but that help to create strong petitions against restrictions.
Pre-empt multiple re-openings responsive to an appeal with a petition requesting an Answer even if new rejections are made.
Make ‘em work - unreasonable examiners are usually trying to do as little work as possible while maximizing points - don’t give them easy points.
Don’t let them lead you down the primrose path - avoid unnecessary clarifications (even when they ask for them) since unreasonable examiners often ask for clarification to force an amendment which they then reject as not supported by the specification.
Don’t fall for red herrings - unreasonable examiners often ask rhetorical questions to get you to start amending in a way that only leads to more rejections.
If we all put a little more effort into dealing with unreasonable examiners they might find that it is too much work being unreasonable and maybe its time to be a little less unreasonable. Especially now when many clients are struggling financially due to the pandemic, innovators need some extra help to avoid losing their IP to the black hole of unreasonable patent examiners.