Jerry's USPTO Thoughts
"Be reasonable, do the right thing, and don't be a jerk about it" - plus the rest of the advice for practitioners, examiners, and SPEs then-Deputy Commissioner Jerry Lorengo shared on Clause 8.
When I sat down with then-Deputy Commissioner Jerry Lorengo last fall, the official reason was for the USPTO to explain the controversial changes to the Patent Examiners Performance Appraisal Plan (PAP), which dictates how patent examiners are evaluated, compensated, and, ultimately, how they examine patent applications. I thought it was important for the patent community to have questions answered about those changes but figured the episode would have a short shelf life.
Instead, it’s one of the episodes that I’ve thought back to the most. Not because of the PAP mechanics — many of which have already shifted — but because Jerry, in passing, kept handing out the kind of advice that holds up no matter who’s running examination or which policy is in effect.
A quick update before the advice: since we recorded, Jerry was named Acting Chief Communications Officer. I’m not going to claim that his star performance on Clause 8 is what landed him the role, but he wouldn’t be the first to be named to a top USPTO role not long after first appearing on the show.
The other update is less of a joke. The streamlined review — the new requirement that supervisors sign off on first office actions from primaries and PSAs, which Jerry defended at length on the episode — has since been scaled back and then suspended outright by Director Squires after SPEs pushed back.
Listening back to the episode, that’s in line with the process Jerry described. He told me the office was “baselining it this first quarter,” that “we collect a lot of data and we watch,” and that they’d adjust based on feedback from examiners, SPEs, and practitioners. It seems the program didn’t survive that feedback loop. But the approach he described outlived the policy. So did the advice.
Advice for practitioners
Jerry’s clearest message: pick up the phone. Even after final. The worry going around - that the new interview limits mean examiners will start automatically denying subsequent interviews during the same round of prosecution - is, in his telling, an “incorrect assumption.” An examiner who refuses after-final interviews as a matter of personal policy is “inappropriate,” and arbitrarily denying interviews now counts against an examiner’s rating under the stakeholder-interaction element.
But Jerry also stressed: the interview is only as good as your agenda. Jerry came back to this more than once: the agenda should discuss the claims, the prior art, the direction you want to go, and any amendments you’re weighing. And, after final, practitioners should expect to send it before the interview gets scheduled. It’s the thing that lets an examiner walk to their SPE and say, I’ve got a real agenda, this will move the case, authorize the time. A vague “can we talk?” gives the supervisor nothing to approve. A tight agenda gives them every reason to.
And the line I keep repeating to younger associates is Jerry’s framing of the statute: a person is entitled to a patent unless. “Close calls should go to applicants.” When an examiner is hunting for something to reject on an otherwise allowable case, in Jerry’s words, they’re “looking for something that shouldn’t exist in the first place.”
Other advice to practitioners regarding interviews:
Use the AIR form. File your interview request through the applicant-initiated interview request (AIR) form so the examiner can’t miss it.
Make the second interview easy to approve. Your one automatic interview per round is the limit now; the next one needs SPE sign-off, so hand the examiner a real agenda and a clear sense of what it’ll resolve.
Don’t bank interviews. In Jerry’s view they work like feedback — most useful when they’re timely and specific, not saved for a rainy day.
Skip the fishing expedition. The MPEP discourages sounding-out interviews with no agenda, and Jerry says good attorneys rarely bother with them anymore.
Advice for examiners who feel stuck with their SPE
Jerry became a supervisor during the first year of the old “second pair of eyes” program — walking into a new art unit full of examiners with decades more experience examining the technology.
His advice to examiners who feel like nothing they do satisfies their SPE: it doesn’t have to be that way, and you don’t have to absorb it. “People don’t leave a job, they tend to leave a boss.” If the relationship is genuinely broken, go to your group director — examiners ask for and get transfers, and Jerry approved plenty when he was a group director himself. The SPE is meant to be a coach, not a gatekeeper.
He was also blunt about the specific thing examiners and practitioners both complain about — the supervisor who hands work back with some version of “go find something to reject.” Jerry doesn’t defend it. “I don’t feel it, keep looking” is, in his view, not how it’s supposed to work. The supervisor’s job is to tell the examiner what to look for and where, or to point to the art — not to outsource a gut feeling and call it review.
Other advice to examiners:
Journal your cases. Log the serial number and timestamp each phase — reading, understanding the claims, planning the search, searching, drafting. After six or seven, your time-suck shows itself. Jerry’s was searching.
Search smarter, not longer. If search is where your time goes, ask colleagues who know the technology how they’d approach it, instead of searching exhaustively out of a sense of completeness.
Don’t ration interviews. Refusing after-final interviews as a personal policy is improper, and so is telling attorneys to “keep their powder dry” — arbitrary denials hit your stakeholder-interaction rating.
Just ask for the time. When you want a second interview or after-final time, send your SPE the agenda and ask — they should generally say yes.
Be the one people ask for help. Become the best examiner at your grade and in your technology, the one other examiners and SPEs are told to go ask.
Take the leap before you feel ready. When something opens up that you don’t feel quite qualified for, that’s usually the signal to take it. “We’re always our worst critics.”
Watch for the off-ramps. The office opens up other paths — law school (it paid for Jerry’s), a master’s, management, petitions, or training new examiners at the academy.
Advice to SPEs
Jerry’s whole pitch for the streamlined review — now suspended, but worth hearing anyway — was that it should be “a point of collaboration and feedback, not a gotcha.” The most senior examiners, he kept emphasizing, are hyper-technical experts who often forget to explain what is plainly obvious to them. Sometimes the value a supervisor adds is catching the one extra sentence that would let the attorney follow the logic from A to B to C without having to guess at it.
His model for how a supervisor should handle an examiner who knows the art better than they do came from his own first year: I’ll make the evaluations, but if I see something, I’ll come to you and ask what you think, and we’ll talk it through. The technical expertise flows up from the examiner; the supervisor carries the burden to learn it. The old-school version — and he told this one with obvious affection — was his own first supervisor walking him to the search room, the physical “shoes,” pulling open a drawer, flipping to the reference, and saying, “here’s your 102.” That’s guidance. “Keep looking” is not.
Other advice to SPEs:
Default to yes. On requests for second interviews and extra non-production time, Jerry’s posture for supervisors is that they “should be saying yes.”
Review allowances and rejections the same way. Keep it agnostic — judge whether the patentability call was right, and don’t go harder on the allowances.
You have discretion on errors, so use it. Whether a clear error counts against an examiner’s rating is your call, and these are your most senior people, so be thoughtful rather than a gotcha.
Coach the typos. A “claims 1 through 100” slip on a ten-claim application is a coaching moment, not an error to log.
There’s no error quota. Nobody expects you to hand out a set number of clear errors.
Pay for the genuine outliers. Grant non-production time for the real one-offs — a monstrous IDS, a 75-claim set, a PPH case that needs more time.
The part that has nothing to do with the PAP
What ties all of it together is a phrase Jerry used several times: be reasonable, do the right thing, and don’t be a jerk about it. You won’t find it in the PAP but the USPTO (and its battle with the backlog) would improve immensely if everyone — examiners, supervisors, and the practitioners on the other side — consistently operated that way.
The other thing that’s stayed with me is how Jerry talks about the job itself. At the macro level he’s careful never to lose the person inside the data: “behind every number is a person, behind every application number is an inventor.” And when I asked him for career advice for new examiners, he reached, unprompted, for Newton — if I’ve seen farther, it’s because I’ve stood on the shoulders of giants. He’ll never be the inventor on the shoulders, he said. He’s the one who helps build the ladder.
Then he mentioned that his job is written into the Constitution, and that Thomas Jefferson was his first colleague at the office. For a show named after Article I, Section 8, Clause 8, I couldn’t have scripted it better.
Congratulations on the new role, Jerry.
🎧 Watch the full episode here or list in your favorite podcasting app, and find additional bonus content on the new Clause 8 YouTube channel.