At the USPTO, patent applications are assigned an examiner that continues with the case through issuance. As public data confirms, examiners have widely varying approaches. For example, even examiners in the same art unit can have widely varying allowance rates. Commentators often lament this variation as a substantial problem where the assignment of an application to an examiner has a stronger impact on the application’s success than the strength of the invention relative to the prior art.
To this end, there are many times where an applicant would like their application reassigned to a different examiner. Many applicants have unsuccessfully requested assignment of a new examiner for cited numerous reasons. While a review of such unsuccessful attempts is informative, this post reviews a recent case showing that it is indeed possible, at least in some egregious circumstances, to achieve examiner reassignment.
The case is Application 16/389,094, which coincidentially also had a recent appeal (Appeal 2023-002532). Another post may analyze the substantive issues in the case (which resulted in three appeal briefs and ultimately a reversal by the Board. The focus here is on the facts that led up to a successful petition for reassignment.
The issues started when the examiner provided a rather aggressive explanation of perceived problems with the claims in a Final rejection. Here is a sample of some of the language from the examiner:
While the applicant, and their representative, probably took offense at the assertions and language in the rejection, likely that language alone would not have been enough for reassignment. But that was not the end. The applicant’s representative contacted the examiner’s SPE. There were some apologies and the SPE agreed to withdraw the final rejection and issue a new non-final action. Next, things get a little murky and somehow the offending final rejection disappears from the file history. Whether that was by mistake or intentional likely does not matter because the applicant then had the makings of a cover-up, which can be worse than the underlying offense. The applicant petitioned the group director, appealing to the sanctity of the record for the public and asking for reassignment, which request was granted.
It is difficult for an applicant to have a case reassigned to a new examiner. Here, the applicant took prudent steps and the Office’s own actions ultimately provided enough to warrant a finding of at least the appearance of impropriety. In some ways, this example is less illustrative of examiner bias than other examples were reassignment was denied, and it seems that the allegation of a cover-up may have carried the day for the applicant.