Strategic Response to Rejection

Introduction

Many suspect that the patent application process is a bureaucratic morass.  The fate of your patent application can appear to be tied to the whims of a faceless patent examiner.  It can be.  But the astute applicant can expedite the process.

Discussion

The patent examiner responsible for examining and processing your application is selected by a process outside of your control.  In reality, there is no ability to request a different examiner or effectively complain to the examiner’s boss.  The only feasible remedy to get around an unreasonable examiner (an examiner that is either unable or unwilling to accept your legitimate patentability arguments) is to file an appeal with the Patent Trial & Appeals Board.  However that is a separate topic.

However, every examiner is operating under an imposed and rigid production schedule. The examiner is graded on the number of applications that are disposed of, either by allowance or final rejection.  The examiners are incentivized to dispose of cases as quickly as possible.  The system does not incentivize an examiner to maintain an active case through a repetitive series of rejections.  

Every examiner is responsive to a “counts” system.  The examiners are all required to achieve a minimum number of application dispositions each quarter of the calendar year.  An examiner receives the most credit (or counts) for conducting the initial review and prior art search of a new application, including the issuance of a first “office action”.  

 (If you have read my other articles, you will know that this first action is invariably a rejection of all claims.)  But the examiner quickly begins to receive less credits in the follow-up actions.  He/she receives less credit for issuing second or third rejections.  Remember the examiner is incentivized to promptly dispose of cases.  Allowing the application is a method for the examiner to dispose of a case

Perhaps it is useful to think of the examiner’s first office action as his/her “best shot” at challenging the patentability of your invention.  Careful reading of the examiner’s first office action, along with careful consideration of the prior art cited by the examiner, is essential.  It is time to strategize.  Organize the best response, including consideration of amending the rejected claims, particularly the independent claims.  If possible, consider amending claims to avoid the scope or coverage of the prior art.  For example, does your invention include a structural element or method step that is not disclosed in the prior art?  If yes, then insert that item into the claim.  Is a cited prior art reference directed to a totally different problem and therefore is not analogous art? Is the examiner improperly combining references?

This is when I want to talk to the examiner, realizing that it may be to the advantage of the examiner (operating under the USPTO examination credit system) to expeditiously agree to modified claims that overcome the examiner’s stated written rejections and thereby be deemed to be allowable.  (It is also the time to cleanup any informalities that carried over in the original filing documents.)

This conversation with the examiner is conducted through the interview process.  Typically it is a telephone conversation lasting approximately ½ hour.  I have had longer interviews/negotiations when the examiner senses real progress is being made.  

The key point is that a cooperative strategy may achieve allowance of valuable claims while allowing the examiner to receive the same amount of credits that he/she would obtain in having to consider and reject your formal written response to the first Office Action.  Allowance removes the application from the examiner’s docket, freeing the examiner to take up a new (higher scoring) application.

Conclusion

Don’t be discouraged by the examiner’s first office action that rejects all of the claims of the application.  Now is the time to carefully review the examiner’s stated reasons for rejection, the applicable text and drawings of the examiner’s referenced prior art.  You also need to carefully review your own specification and drawings, along with the claims.

Search for distinctions between your invention (as stated in the claims) and the prior art.  Be prepared to consider amendments to the claims that will satisfy the examiner that your invention is patentably distinct.  Have a strategy and talk to the examiner.  Bombastic argument accomplishes nothing.  

Copyright David McEwing 2019