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The New Practitioner/Examiner Relationship: Collaboration For Valid Patents

The New Practitioner/Examiner Relationship: Collaboration For Valid Patents published on No Comments on The New Practitioner/Examiner Relationship: Collaboration For Valid Patents

Patent examination and patent prosecution are often regarded as adversarial processes: the practitioner pushes for an allowance with broad patent scope; the examiner pushes out rejections and seeks narrow claims. The process has often been described as a zero-sum struggle over the outcome.

However, today’s patent system is deeply affected by the attention of other parties: competitors and accused infringers; the federal courts, including the Supreme Court; and the public and Congress. Their attention and input require careful consideration of additional factors beyond the outcome, including the enforceability of the patent, the reliability of the patent system, and public perception. These factors have fundamentally altered the relationship between examiners and practitioners: we are not adversaries, but collaborators with the objective of issuing the right patent for each invention.
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First Action Interview Pilot Program: Good Idea, Flawed Process

First Action Interview Pilot Program: Good Idea, Flawed Process published on No Comments on First Action Interview Pilot Program: Good Idea, Flawed Process

Interviews between applicants and examiners can be very productive for moving cases through prosecution. Accordingly, the USPTO has implemented a First Action Interview Pilot Program (“FAIP”), in which applicants and examiners conduct an interview before the first action on the merits. This objective is sound: an open conversation, before the examiner has established a position, can educate the examiner about the invention, and allow the examiner to focus the first search and the first office action on the most important claim elements.

However, as currently implemented, the program exhibits significant disadvantages that diminish the achievable rewards. Indeed, an application that is enrolled in the First Action Interview Pilot Program (FAIP) may incur significant disadvantages over ordinary examination that exceed the benefits of the program.
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