Thrive Despite Changes at the USPTO

The fall of 2025 saw several significant changes and announcements at the USPTO, particularly in the areas of leadership shifts, Artificial Intelligence (AI) integration, new procedures, guidance on subject matter eligibility, proposed rules for the Patent Trial and Appeal Board (PTAB). However, the USPTO is changing the Performance Appraisal Plan (PAP).

Overview of PAPs

As we explained in our last post, examiners are measured on four factors:

• Productivity: Number of office actions / period
• Quality: Quality of those actions
• Docket Management: Completing those actions within the expected timeframe
• Stakeholder Interaction: Internal and external contacts

Previously the weighting was 30%, 30%, 30%, and 10%. The weighting for 2026 is 40%, 40%, 10%, and 10%.

 

Overview of Changes — USPTO PAP Changes

The USPTO announced a new PAPS for FY26, but we haven’t seen the text, nor are we ever likely to see the full text. We are limited to what examiners say offhand or anonymously online. The changes are aimed at influencing examiner behaviour and productivity, creating several challenges and opportunities for patent agents:

1. Reduced examiner engagement time:
   • Capped interviews: With only one hour of credited interview time (potentially excluding after-final interviews), examiners will be less incentivized to engage in lengthy discussions or iterative amendment proposals during calls. While they supposedly can’t deny second interviews based solely on this policy, their motivation to achieve progress within that limited, credited time will be high.
   • PPH discounting: Examiners presently get a 2.0 count for PPH cases; soon it will be a 1.5 count. Allocating less time for PPH cases means examiners might rely more heavily on the foreign examination record or conduct a less thorough independent U.S. search and examination. This could speed things up, but might also lead to overlooking nuances specific to U.S. law. You might see a needless RCE if you have a typo in an amended claim. Why get a 1.50 count when you can get a 1.50 Plus 7/8*1.50 ~ 2.8 count?
2. Increased scrutiny:
   • “Second Pair of Eyes” on First Actions: Previously, a second pair of eyes had to review notices of allowance. Now, supervisors are to review each first action. The details are unclear, as this could be for all actions or just the allowed material. What is clear is that this is so even for primary examiners. This may make the first actions more meaningful and the first action responses more critical. If an examiner has an initially favourable view, then this may kill off allowed claims on the first action.
   • Supervisors to babysit examiners in interviews: The supervisor must approve or participate in interviews over the one (1) hour examiners get credit for. This means they will be harder to schedule. Additionally, it is unclear why the supervisor can refuse an interview.
3. Pressure for faster resolution:
   • Higher production quota: It used to be that 95% production was sufficient. Now the office requires 100% production for a “Fully Successful” rating meaning anything less comes with a formal warning. This strips some of the last amount of breathing room for examiners and puts direct pressure on examiners to dispose of cases more quickly. This could manifest as quicker allowances if claims are clearly allowable, but also potentially more final rejections if issues aren’t resolved efficiently. Examiners will be more willing to use subject-matter eligibility to reject claims since they only need to write in detail for independent claims. Examiners might be less willing to engage in prolonged back-and-forth arguments. Very few examiners always hit the current 95% target, so requiring them to move up by 5.26% for zero extra pay will hurt them.
   • Bonuses are hard to get: Production bonuses start at 110% are 1% pay for each 5% above 100%. So 110% is 2% bonus, and 135% is 7% bonus.
   • SPE overwork: A Supervisory Patent Examiner (SPE) is a managerial role within the Patent Examining Corps. They oversee a group of examiners, 12 — 20, called an Art Unit. They sign off on office actions, grant permission for interviews, review material from examiners who have signing authority, and more. The general impression is that their workload will explode.
4. Potential morale issues:
   • No union rights: Mr. Trump, president of the United States, stripped the examiners of their union rights, declaring them essential to national security. They have no bargaining power. See EO 14343: “Further Exclusions From the Federal Labor- Management Relations Program” 90 FR 42683.
   • No time to think: We strongly believe examiners should be given time to think. The office just pulled away 2 hours of their time each week. The office used to offer 25 hours of technical training per year and that is now gone.
   • Back to the office: The examiners can’t work from home or three remote offices. Two offices are being closed, and a new one will not open.
   • The employee satisfaction ratings are declining. The agency was once a good place in the public service now has middling scores.
   • More work, less pay: As noted, the combination of higher production requirements and potentially lower bonuses can impact morale. While professionalism is expected, a less motivated examiner might be less flexible or less willing to proactively find solutions during prosecution.

The Psychology of Tracking & Rushing People

These changes aren’t fun for the examiners.

Most workers hate to be monitored. Frederick Winslow Taylor was an American mechanical engineer who believed all activity could be quantified and optimized. He moved from industrial workers to clerical workers with affect on many today. Examiners also must use timecard systems – implemented through software and badges.

Nobody likes to be rushed. One of my first bosses, a lawyer and now a trained counsellor, explained that when you rush people to make a decision, the answer is no.

 

Working with Examiners under the New PAP — Patent Prosecution Strategy
& Patent Office Tactics

Given these potential changes, patent agents should adapt their strategies to work effectively within the new constraints. This list outlines our plans.

1. Front-load application quality:
   • Draft high-quality applications: With potentially stricter first action reviews, the initial application quality becomes even more crucial. We will keep providing clear and thorough descriptions, well-defined claims, and filing IDSes.
   • Consider pre-examination searches: We are fans of searches before drafting. We will continue to use these to tailor claims accordingly and hope to streamline the processes. Of course, we submit the search results as an IDS.
2. Streamline prosecution arguments:
   • Be clear and concise: Examiners under time pressure appreciate arguments that are easy to understand and directly address the rejection points. We will continue to edit our remarks, use drawings within the remarks, claim charts, and the like.
   • Make examiner adoption easy: We structure arguments and proposed amendments in a way that the examiner can readily adopt them in their reasons for allowance.
   • Know when to appeal, RCE, or CON: We are developing some guidelines to determine when to appeal, for which the examiner gets little credit and takes a long time, and when to CRE. For example, we favour appealing if an examiner seems unwilling or unable (due to time constraints) to engage substantively after a final rejection, and we think that further rounds of prosecution won’t get our client good claims.  Under the new PAPs, filing a Request for Continued Examination (RCE) generally remains the default option. We also file CONs instead of RCEs, which means forgoing Patent Term Extension (PTE) but does give the examiner a full 2.0 count.
3. Leverage PPH effectively:
   • Highlight favourable foreign results: Of course, we will clearly point to allowable claims from corresponding non-U.S. applications and explain how the pending claims conform.
   • Know your PPH: Our founder, Kurt Kolb, has his Patent Prosecution Highway strategy dialed. He knows where to file and accelerate your patent application to speed up examination in those offices and in the US.
   • Address U.S. specifics: Examiners will read for and insist on compliance with U.S. law (like 35 U.S.C. § 101 or § 112). Like in our PCT practice, we address potential U.S.-specific issues before the first action, e.g., restriction requirement or FAOM.
4. Maintain professionalism and courtesy:
   • Be empathetic: We do and will acknowledge the pressures examiners face. Morale is low. Hopefully, we are a better part of their workday.
   • Be grateful: We thank the examiner for every informality they find. Of course, we don’t want to praise a rejection. Ever.
   • Make their job easier: We hope that well-organized responses, clear claim amendments, and prompt communication help the examiners process our cases efficiently.

 

 

Next Time

Up next, we will share

• Interview practices
• Recent changes to these practices
• Some ways to best make use of examiner interviews

Conclusion

These are complex topics involving law, labour relations, politics, and public administration.  If you would like to discuss protecting your invention, please contact us.