USPTO Examiners are evaluated partially on their production. This production is largely determined by the count system. The count system is not discussed in the MPEP but can significantly influence procedural considerations of prosecution.
Basically, an Examiner receives credit (measured in “counts”) for reaching particular stages of prosecution. The Examiner must obtain a minimum number of “counts” each year. Production-based monetary bonuses also are based on “counts.”
The below chart is from Slide 7 of the “Overview of Count System Initiatives and Changes.”
RCE = Request for Continued Examination
FAOM = First Action on the Merits
Final = Final Office Action
All/Abn = Allowance, Abandonment, or any other Disposal (such as an RCE or an Examiner’s Answer)
The columns of the chart represent stages in a prosecution. For example, the chart illustrates an Examiner receives 1.25 counts for issuing the FAOM. The FAOM is not an election or restriction requirement. The FAOM typically is a non-final Office Action.
Let’s assume the Applicant files a response to the FAOM. When the Examiner issues the next communication, the Examiner receives 0.25 counts.
The Examiner then receives an additional 0.5 counts, when a communication brings the application to the next stage. For example, if the communication is a Notice of Allowance, the Examiner receives the additional 0.5 counts for issuing the Notice. If the Applicant abandons the application, the Examiner receives the additional 0.5 counts for issuing the Notice of Abandonment. And if the Applicant files an RCE, the Examiner receives the additional 0.5 counts upon the filing of the RCE.
(Note the Examiner receives no counts for issuing an Advisory Action.)
When the Examiner issues another communication following the first RCE, the Examiner receives 1.0 counts for the communication (i.e., not 1.25 counts). The counts then proceed as above, with an exception. The exception is that the first communication following the second RCE (or subsequent RCEs) is only worth 0.75 counts.
So, how might this system influence procedural considerations? First, consider that an Examiner receives 0.75 (= 0.25 + 0.5) counts for allowing an application instead of issuing a final Office Action. Alternatively, the Examiner instead could issue the final Office Action (for 0.25 counts), receive 0.5 counts when the Applicant files an RCE, and receive an additional 1.25 – 1.5 counts for allowing the application after the RCE. Thus, an Examiner can receive 166 – 200% more counts, if prosecution requires an RCE.
So, an Examiner might be reluctant to issue an early allowance. Instead, an Examiner might prefer a final clarifying amendment that happens to require an RCE.
More information about the count system is available from the USPTO. In addition, Session 10 of our ExaminIrks series will consider a modification to the count system on April 20, 2021 at 12:05pm (JST). And if there are any further questions about how the count system can influence after-final practice, please contact us.