At Lund IP, years of experience have demonstrated that working with patent examiners, rather than against them, produces better results for applicants. In the United States, more than 85% of patent applications are rejected at least once, while the overall allowance rate exceeds 70%. As these statistics suggest, the process between filing a patent application and allowance or abandonment is very significant to the end result. Absent appeal, this process is largely controlled by a single patent examiner and their direct supervisor. Patent examiners effectively serve the roles of opposing counsel, judge, and jury, so it is not hard to imagine why forming a relationship based on mutual respect and collaboration often results in better outcomes for applicants than adversarial tactics.
Moreover, because every patent examiner is assigned to a specific technological area, such as an art unit at the USPTO, patent applicants with multiple applications within a technological area will often have their applications evaluated by the same examiner. Forming positive relationships with patent examiners is especially important for such applicants. The best way to form a positive relationship with an examiner is to pick up the phone and give them a call, usually in the form of a formal examiner interview.
While details vary across patent offices in different countries, new patent applications sit in a queue until they are assigned to an individual patent examiner’s docket for examination. The examiner reviews the application and performs a prior art search to make a determination whether the application meets the required legal standards, including novelty and nonobviousness in the United States. The examiner then prepares a document representing their findings, such as an Office Action or Notice of Allowance, which is sent to the applicant, who has the option of abandoning the application or responding.
The basic process for responding to a rejection issued by a patent examiner includes reviewing the rejection and prior art references, forging the most suitable arguments and/or claim amendments, and providing a written response to the examiner for consideration. In most jurisdictions, this process can repeat itself endlessly until allowance, abandonment, or appeal. The written legal argument process is well-practiced in many other forums for adversarial adjudication and is a central theme of a formal legal education. However, written interactions of a technical nature fail to contribute to a useful familiarity between practitioners and examiners. In addition, disputes appearing to be technical in nature are often founded in disagreements about terminology and claim interpretation. Such misunderstandings can take multiple rounds of written prosecution to be resolved—a significant waste of time and money. In contrast, direct contact between examiners and practitioners through examiner interviews can quickly clarify disagreements, support early resolution, shorten the written record associated with the application, foster a positive working relationship for future matters, and save applicants money.
Key Examiner Interview techniques
- Interview early and often. Familiarity between examiners and practitioners generally results in better and faster results for applicants.
- Maintain a positive demeanor. How an argument is delivered is often more important to a positive resolution than the argument itself.
- Listening is more important than speaking. What appears to be a major point of disagreement can quickly resolve itself following verbal clarification by the examiner.
- Keep interview agendas short, as they will generally be included in the file history.
- Request that concepts be first discussed conceptually rather than in the context of the claim language. While written arguments only carry weight when they directly conform to claim language, disagreements in claim interpretation are most relevant to a verbal discussion after the technical details of the prior art and inventions have been agreed upon.
- Practitioners should actively solicit recommendations from the examiner. All else being equal, conforming to an examiner’s suggestion is more likely to result in an allowance than following a strategy proposed by the practitioner. Not all examiners will be comfortable offering suggestions, so practitioners need to be prepared to offer their own suggestions, as well as prepared to offer suggestions likely to be more agreeable to the client than those proposed independently by the examiner. When offering suggestions, it is better for the patent practitioner to propose suggestions in the form of questions.
- Speak as freely as possible while keeping the best interests of the client in mind. Openly discussing details of the prior art and the inventive concepts of the application promotes trust and collaboration with the examiner.
- While formal agreements resulting in allowance are preferable, agreements to have further conversation in the event the Examiner fails to find the application in condition for allowance following applicant’s next submission are also useful to promote a positive collaborative working relationship.
- Written interview summaries should be brief but include enough details to remind the examiner of your fruitful discussions. One of the author’s favorite techniques is to include some version of, “While specific claim language was not agreed upon, the examiner indicated that amendments as presented herein would likely overcome the rejections of the prior Office Action.”
- Discuss appeal only as a last resort. Not only are appeals expensive for clients, they tend to produce inconsistent results, and do not promote a positive working relationship for future applications in front of the same examiner.
Collaborate with patent examiners to save time and money by Dan Lund is licensed under a Creative Commons Attribution 4.0 International License.
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