©Law Office of David McEwing PC, 2018

The fate of your patent application is in the hands of the patent examiner that has been assigned to your application. In reality, there is no ability to request a different examiner or 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.

I suggest it may be more productive to realize that the examiner is operating on an imposed/rigid production schedule. The examiner is graded on the number of applications that are disposed of, either allowed or finally rejected/abandoned. 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.

Also all of the examiner’s activities regarding the examination of a case are documented. For example the thoroughness and strategy of conducting a prior art search are recorded in the prosecution history that is accessible by the applicant (as well as the examiner’s supervisors and USPTO quality control organization). The examiner is expected to thoroughly search the prior art the first time. The examination is not to be conducted in a piecemeal fashion.

Where this is headed is that the examiner receives the most credit in issuing the 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 of disposing of a case.

Perhaps it is useful to think of the examiner’s first Office Action as his/her “best shot”. Careful reading of the 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.

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.)

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.