Luck really does play a role in the patent process. Although most inventors and patent practitioners will not be surprised by Shine Tu’s findings, an empirical study of over 10,000 patent applications concludes that there is a wide variation in the application of patent rules during examination by different USPTO Patent Examiners. The study appears in volume 20 of Stanford Technology Law Review in “Luck/Unluck of the Draw: An Empirical Study of Examiner Allowance Rates” and proposes a review of the prosecution history prior to patent grant for Examiners with statistically high or low allowance rates as a way to ensure a more consistent application of the patent rules by the Examiners. Interesting idea worth exploration, but I fear it would be counterproductive to the many measures being taken to address the backlog at the patent office.
Is there a way to increase your odds of getting a different examiner? An old “trick” of patent practitioners was to file a continuation application rather than continue to argue the rejected application and use a “throw away” claim 1 in the continuation application. Patent applications are assigned to an art unit based on the first independent claim. Thus, if the Examiner you are hoping to avoid is in a particular art unit, you can include a first claim drawn to a different invention to “encourage” assignment to a different Examiner or art unit. Once assigned to an Examiner, it is extremely unlikely to be changed. Then, after the first office action on the merits is issued, the applicant can withdraw or cancel this first claim and focus on the invention claims of interest most likely with a different Examiner.