There are three tips that I would offer when dealing with patent examiners.  First, and this applies to many other contexts besides the patent one, do not be rude to a patent examiner.  Maybe there are scenarios in life where rudeness can pay off, but dealing with a patent examiner is definitely not one of them.  Patent examiners assume two roles.  They are, in a sense, your adversary in procuring a patent.  However, unless you appeal them, a process which will cost your client a not insignificant sum of money, and take a not insignificant amount time, they are also the judge in your case.  They are the one who has to say yes.  If you are rude and offensive toward them, getting them to say yes to you will be a much more daunting task.  Like all people, some patent examiners are easier to deal with than others.  That said, being kind, without sacrificing your strength, when you show the patent examiner your positions, will always help advance your case.  The patent examiner may very well disagree with everything you are saying, but by not making an enemy out of him or her during correspondence, you have not closed the door on him or her to saying yes in the future.  

Second, requesting an interview with a patent examiner can often be a good tool to learn about their tendencies.  Most correspondence between applicants and patent examiners tends to be via written documents – 1) applicant writes and files patent application; 2) examiner examines application, writes Office Action, and mails Office Action to applicant; 3) applicant reads Office Action, reads prior art, reads claims again, writes Amendment or Response, and mails Amendment or Response to examiner; 4) examiner reads Amendment or Response, agrees or disagrees with it, and writes further document to send to applicant.  This process can go on and on without any spoken communication between applicant and examiner.  As such, it can leave a lot unsaid.  In life, a two paragraph email can be construed 100 different ways, and responded to 100 different ways.  However, rather than spending exorbitant amounts of time to respond to the email, a simple phone between the sender and recipient can shed a lot of light on the story.  Similarly, an interview, or, a phone call, between the applicant and the patent examiner can shed a lot of light on where each side sits, making coming to a resolution much easier than if the parties were to merely deal with written documents and never hear each other out loud.

While some patent examiners may be closed off to discussing a case, many, and I would say most, patent examiners will be quite frank about how they view the claims of the patent application.  If these patent examiners are engaged early on, it is quite common that they will reveal what, if anything, about the application they find to be distinguishable over the prior art.  If they reveal something, and the inventor does not find that revelation to be too big of a deal for them, then a simple amendment to the claims could be all that is needed to overcome the patent examiner’s initial objections with the application.  In this scenario, the interview has streamlined the examination process, saving time and money, as well as resulting in a patent.  

Finally, it has been my experience that patent examiners are more reluctant to respond to legal arguments than technical ones.  That is, though I have had success in presenting case law to patent examiners to get them to withdraw their rejections, I have been far more successful in getting them to withdraw their rejections via technical arguments.  For example, if an element of my client’s claim was directed to an insulative component, and the examiner rejected the claim over a prior art reference that explicitly required a conductive component, pointing out to the patent examiner this technical distinction, e.g., that the prior art is incapable of functioning in any manner other than with a conductive component, and my claim calls for an insulative one, is a strategy that I have found to yield much better results than arguing case law.  Of course, this does not mean that case law should be ignored.  If a patent examiner is blatantly running afoul of US Patent Law, you cannot ignore this.  Whether the patent examiner will respond to the case law or not is one thing, but the Patent Trial and Appeal Board, where the case will end up if you decide to appeal the patent examiner, is much more responsive to arguments based on case law.  However, during initial, and cordial, conversations with a patent examiner, technical arguments about the substance of the technology, and how it differs from the substance of the prior art, are a great way to bend a patent examiner to your way of thinking. 

This article was authored by John P. Powers, and is intended to keep readers current on matters affecting intellectual property and is not intended to be legal advice. If you have any questions about its content, please leave a comment below.

©John P. Powers, 2020, all rights reserved.