Minneapolis, Minnesota, July 31, 2018 – Lund IP president Dan Lund joined his former coworkers at Faegre Baker Daniels in winning the 2018 Hennepin County Bar Association (HCBA) Softball League championship. Playing their third game of the night, the 8th-seeded Faegre won the championship 15-12 under the lights against perennial foil and #3 seed Meagher & Geer, the undefeated league champions from 2015 and 2016.
The game was not without controversy as Meagher & Geer partner and team captain Tim Ridley successfully lobbied for home field advantage in view of his squad’s higher seed. The official playoff bracket listed Faegre as the home team by way of beating the #1 seed earlier in the tournament.
In their two previous games of the evening, Faegre snuck by top-seeded Nichols Kaster 7-6 in the opening round before dispatching #5 seed Robins Kaplan in the semi-final round.
Faegre went 2-0-1 over its last three regular season games to sneak into the playoffs as the 8th seed with a 4-4-1 record. Faegre secured the tiebreaker with 17-3 victory against 9th place MACDL during the last week of the regular season. Lund served as the pitcher for the Faegre team during their championship run.
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.
Newport, Minnesota (May 3, 2018) – Dan Lund has opened a new law firm, Lund IP, in his home city of Newport, Minnesota, where Lund currently serves as mayor. Lund has spent the past 13 years practicing law in patent departments at Faegre Baker Daniels (Minneapolis) and Shumaker & Sieffert (Saint Paul).
“I am enthusiastic about this opportunity to grow and strengthen relationships with my clients,” said Lund. “At Lund IP, I will bring my years of experience from working with some of the best in the business at go-to patent firms, while having additional flexibility in supporting the business objectives of my clients.”
Lund is a registered patent attorney who brings enthusiasm and a pragmatic approach to problem solving. He works with clients to develop and implement intellectual property strategies to add tangible value to their businesses while respecting their budgetary constraints. His practice includes patent filing and prosecution, IP licensing, and dispute resolution.
Lund received his BS from Michigan Technological University and is a graduate of the University of Minnesota Law School, where he served on the Minnesota Intellectual Property Review Journal.
About Lund IP PLLC
Lund IP is a law firm that focuses on collaborating with clients in plain language to develop IP strategies that best serve their business objectives. Lund IP’s office is located in Newport, Minnesota. Lund IP can be reached at 651-968-0800 or firstname.lastname@example.org.
Dan Lund is a registered patent attorney who works with his clients to develop and implement intellectual property strategies to add tangible value to their businesses while respecting their budgetary constraints. His practice includes patent filing and prosecution, licensing and dispute resolution. Read more →