The USPTO has proposed changes to the examiners’ Performance Appraisal Plan (PAP) with effect on applicants and, to a lesser extent, their patent agents. Nobody is sure how to meet these changes, but we will review the system, the changes, and our suggestions over a few posts:
- PAP and counts — the mysterious way the USPTO evaluate examiners
- Changes at the USPTO and how you can react — Thrive despite changes at the USPTO
- Interview practices
- Saving the examiners some time
The Patent Office & Patent Examiner Corps
The U.S. Department of Commerce includes the U.S. Patent and Trademark Office (“USPTO”), which employs the Commissioner of Patents. Their office employs over ten thousand employees, including approximately 8,500 patent examiners who work in the USPTO’s Patents business units. These patent examiners generally have a degree in a STEM discipline and examine about 600,000 patent applications annually.
PAP & Counts
Before sharing the changes, here is a basic overview of the system as it was in place until 2025 September 30. In a future post, we will discuss the USPTO PAP changes.
The PAP system is how the examiners are evaluated. Unlike most of the information about processes at the USPTO, the PAP system has never been fully published. The USPTO has shared some details. An examiner’s performance has three parts.
- Productivity: Number of office actions / period — 30%
- Quality: Quality of those actions — 30%
- Docket Management: Completing those actions within the expected timeframe — 30%
- Stakeholder Interaction: Internal and external contacts — 10%
The last one is a customer service element. It is very unclear how this is measured, but it includes being responsive to applicants. Quality is measured by the absence of enumerated errors in the examiners’ work. Many examiners claim zero errors. Productivity is based on issuing office actions at the right cadence and docket management is not taking too long on them.
Most of the PAP system and the examiner’s productivity include a system of counts whereby examiners get credit for certain work. An examiner gets 2.0 counts for an application in the first round of examination, 1.75 for the first RCE, and 1.50 for each RCE thereafter. Thus, on average, the examiner gets about 4 counts over 2.25 rounds over two years per file.
How these counts work out to performance is complicated. It is better to focus on the time the examiners get. A senior examiner with signing authority gets between 6 and 9.5 hours per count, depending on the complexity of the technology. This person, GS-14, is the pay equivalent of a lieutenant colonel or commander in the armed forces. A new examiner, GS-7, gets between 12 and 19 hours, depending on the complexity of the technology.
In the first round, examiners get the following counts
- 1.25 for First Action on the Merits (FAOM), not a restriction requirement
- 0.25 for a final office action
- 0.50 for an allowance, abandonment, or any other disposal
In the first RCE, examiners get
- 1.00 for the FAOM, which is the first time they have had a real opportunity to consider remarks since the first FAOM
- 0.25 for a final office action
- 0.50 for an allowance, abandonment, or any other disposal
In the later RCEs, the examiners get a 0.75 count for the FAOM. The pattern is thus 0.75/0.25/0.50.
What other credits do the examiners get? Not much. They get nothing for advisory action. They get a 0.5 count for an examiner’s reply in an appeal to PTAB. This represents a lot of work that is uncompensated.
One important note is that examiners get a full count in the FAOM for a continuing application. However, they complain that the central docketing won’t release these cases to them. Meaning your DIVs, CONs, and CIPs are gathering dust while there is an examiner who wants to work on them.
Also, the examiners are measured in biweeks, 2 weeks, and fiscal years. They can be below expectations in a biweek but not in a fiscal year.
What to Do?
Present reasonable claims. You have the examiner’s attention for the non-final office action in each round. This is when they will consider your claims.
When we respond to a non-final office action, we know the examiner has limited time for our remarks. For rejections based on references, our options are to show there was an error in the rejection, or to amend the claims. Here we are concise unless we include images in text, as examiners tend to like these.
For subject matter rejections, we provide lengthy replies. We always thank the examiner for considering the remarks and remind them that subject matter practice before the USPTO always leads to lengthy rejections and detailed responses — the implication is that subject matter rejections lead to unfunded work for the examiner.
For claim informalities, we amend and thank the examiner.
We cut deals at the end of fiscal years. However, often the best examiners don’t cut deals. They know their art and are super efficient. With these, we listen to any suggestions they offer on claim amendments. Also, they often cite references to review before submitting amended claims. Now, some clients don’t cut deals, and we respect that too.
References
- Marco, Alan C. and Toole, Andrew A. and Miller, Richard and Frumkin, Jesse, USPTO Patent Prosecution and Examiner Performance Appraisal (June 1, 2017). USPTO Economic Working Paper No. 2017-08, Available at SSRN: https://ssrn.com/abstract=2995674 or http://dx.doi.org/10.2139/ssrn.2995674
- USPTO, 2016, “Examination Time and the Production System” https://www.uspto.gov/sites/default/files/Examination%20Time%20and%20the%20Production%20System.pdf
- USPTO, 2012 “Patent Examiner Performance Appraisal Plan (PAP) Guidelines” http://popa.org/static/media/uploads/uploads/examiner-pap-guidelines-04_19_12-508.pdf
Next Time: 2026 Changes at the USPTO
Up next, we will share
- The specific changes the USPTO has proposed for the examiner Performance Appraisal Plan (PAP)
- How will the upcoming changes in the PAP affect the overall patent application process
- What strategies you, as an applicant, can use to work with examiners
Conclusion
These are complicated topics, and we hope this post explains a little of why we deal with the USPTO in the way that we do. If you would like to discuss protecting your invention with a patent application, please contact us.
