Bear with us for a bit a background before we get to the main point of this post - we promise you will not be disappointed. The post relates to Section 101 and examiner interviews, and more particularly to the so-called 101 expert within an art unit.
Various commentators and CLEs have suggested interview strategies that can be helpful to maintain compact prosecution. The benefits of an interview have been summarized in countless blogs. One strategy relates to the USPTO’s use of Section 101 experts within an art unit, where it has been suggested that having the 101 expert included in interviews can be helpful. This makes sense because if the examiner on the case is going to go discuss whether to allow the claim in view of Section 101 with this expert anyway, cutting out the middle man and including them in the interview gives the applicant a better window into the actual issues. This helps maintain compact prosecution, as the applicant can get the information right from the source and get a better feel for whether there is any way to achieve allowance, or whether an appeal is the only real option.
However, something seems to have happened recently where many at the USPTO are pretending these 101 experts do not exist, and never existed. In a recent call with an examiner, they became unusually annoyed and agitated in response to a request to include a 101 expert in an interview, saying that no such person exists and that no such person has ever existed. This is odd because the USPTO records are replete with, for example, interview summaries signed by none other than “101 experts”. The denials were so strong that it was reminiscent of Shakespeare’s famous line from Hamlet - The lady doth protest too much, methinks.
To try and get to the bottom of what was going on I reached out to another patent prosecution commentator, Clint Mehall. He confirmed that indeed I was not imaging past interviews where a section 101 expert was included, and that he too had had experience with USPTO 101 experts. And while the USPTO’s website did not include any information about 101 experts, such examiners indeed existed.
Whether or not there is any issue with the USPTO utilizing such 101 experts to help examiners work through the difficult and constantly shifting landscape of 101, to deny their existence is startling. As noted above, there is at least some logic to having 101 experts to help bring some consistency to examination across the examiner corp and let an applicant know where they stand. The USPTO also uses interview specialist, and has a page on their website for them (link here). As explained on the USPTO’s website:
Interview Specialists are subject matter experts in each Technology Center (TC) on interview practice and policy to assist both applicants and examiners in interviews, as needed, including facilitating interviews by assisting with technical issues which may arise (e.g. WebEx problems, public interview room setup) or helping to ensure that the interview goes smoothly.
Interview Specialists should be contacted based on the Technology Center that the application is docketed in. Applicants should also be prepared to provide the application number when contacting the Interview Specialist.
So we decided to press further.
And this is where things get even more strange. We filed a FOIA request to understand who the 101 experts were, how they were trained, and if there was any specific processes set up for them. The USPTO’s response was odd:
Huh? This seemed like a carefully worded response that indicates the USPTO did not actually even do a full search. Instead, because the USPTO allegedly does not use experts, there can be no such records to look for in the first place.
As noted above, there is much evidence in USPTO records of 101 experts. Clint has provided a smattering of evidence of the existence of 101 experts at the USPTO to the point that denying they exist seems comical. Consider this case (link) where the applicant summarized an interview where the “Examiner also indicated that he should be able to discuss the case in depth with his SPE and possibly with a 101 expert as part of the AFCP process” (SN 16/212918) in June 2022. Or this case (link) where the Applicant “acknowledges with appreciation the courtesy of Examiner Ta to indicate on the Examiner-posted Interview Summary that he would consult with a 101 expert when considering Applicant’s arguments.” (SN 16/988,111) in August 2022. Here’s an Office action from an examiner who writes that with “regard to the outstanding rejections under 101, a Tech Center 101 expert was consulted regarding the amendment filed 5 OCT 2020 in the instant application. The expert reached the following conclusions …”. (SN 15/754,051). Or this suggestion for an interview from an examiner in their Office action: “The interview may include the 101 Expert for the 1600's technology center.” (SN/15/742,856) in 2021. In case you think these are anomalies, there are many more. Here’s one from 2021 where an examiner writes in the Office action “[f]or the purpose of compact prosecution and moving forward with this application, there are three ways forward that we are recommending since the § 101 rejection is being maintained and the §101 expert that we have been communicating with does not agree that Applicant has overcome the §101 rejection with the newly added limitations to claim 1.” (SN15/722,342).
There are many more examples, even contemporaneous within days of the filing of our FOIA request, including interview summaries written by examiners that list who the 101 expert actually was (and it was not an interview specialist).
So, just like interview specialists, we know there are indeed 101 specialists (or 101 experts) that examiners are consulting in order to decide whether to issue an allowance. This begs the question - why would the USPTO deny their existence? And why would requests to include the 101 expert be met by some examiners with such hostility, including to the point where they imply that no such person has ever existed? Are the 101 experts secret resources that only some examiners are allowed to know about? Has there been a change in policy with the new director? I am not a conspiracy theorist by nature, but the situation seems very odd.
A FOIA appeal has been filed in response to the USPTO’s answer above, and we will see what comes of the situation. In the meantime, anyone currently or formerly with the USPTO who has any insight, please add a comment or share your story. Sunlight is the best disinfectant, and if the USPTO is making a concerted effort to scrub 101 experts out of existence, it would be good to understand why.
Finally, look for some follow-up posts from both Clint and me on some of the strange things coming from examiners regarding 101 rejections due to the uncertainty in the law and the complex legal issues involved.
We look forward to your comments and feedback to help get to the bottom of what is really going on here. In the meantime, we plan to keep pressing the issue.