This installment of patent examination types is a review of examiners’ negotiation tactics. These tactics are used to compel the examiner’s desired result – irrespective of the technical merit of your application and claims.
(Disclaimer: These observations are drawn generally from extensive interaction with the examining corps at large, and do not describe any particular examiner or application. If you’re an examiner and you suspect a description is about you, it’s definitely not – it describes some other, lesser examiner.)
Examination Type #8: Good Cop / Bad Cop
“I want to allow your case, but my SPE won’t let me.”
The good cop / bad cop game isn’t limited to televised police dramas; it arises in the offices of the USPTO. Some examiners will listen to – and even openly agree with – your arguments about the differences between your claims and the references. They will then hang their heads in resignation, and relate a sad tale of the draconian policies and harsh attitudes of their SPE or primary.
This tactic appeals to examiners for many reasons: it allows the examiner to stonewall on negotiation, without a specific technical reason; it defuses the examiner’s obligation to address the substance of your argument; and it redirects the applicant’s frustration toward an unfortunate (and conveniently inaccessible) target. And unlike other negotiation contexts where this tactic appears, you don’t have the option of trying another patent examiner or U.S. patent office.
However, if you pierce the veil and suggest consulting the examiner’s manager, some interesting things can happen:
- Examiner: “No, you can’t talk to my manager.” Some examiners will actively resist attempts to contact their SPE. This attitude is commonplace among primary examiners, whose status is widely perceived to connote supreme power and unaccountability. But even junior examiners may demand that protocol requires that you ONLY talk to them, and take great offense at involving their manager.
All of this is nonsense. While supervisors definitely vary in terms of their involvement in a case, no supervisor has ever asserted that it’s inappropriate to contact them. In fact, that’s why they’re there: to handle problems that escalate past the examiner (and to reduce appeals to the PTAB, which has its hands full).
- Examiner: “You don’t need to talk to my manager; I want to help you.” When confronted with the prospect of involving or even notifying their SPE, some examiners will turn on a dime and become suddenly and surprisingly more compliant and service-oriented. You may even hear a tinge of panic or desperation in their voices. This often happens with remote examiners, who work in different cities – apparently on the condition of keeping their SPE’s workload to a minimum.
- Examiner: “Yes, let’s talk to the SPE together.” Some examiners are actually playing straight, and want some help in making the case to their SPE for an allowance. These discussions often go very well: when faced with an applicant and an examiner who actually agree that the claims are allowable, some SPEs are hesitant to appear as an obstacle in the regular examination process.
- SPE: “Here’s how it is.” Some examiners are being honest that their SPE has a particular policy – and if you’re not willing to go with the flow, you may as well start working on the appeal brief.
- SPE: “You’re right.” In some cases, the SPE will hear your argument, and then say, “the examiner will consider your position” (i.e., “the examiner is wrong, but I’m reluctant to acknowledge that to you”). In rare cases, the SPE will directly tell the examiner, “you need to update your office action.” In either case, it’s clear that the appeal to authority was not legitimate, and the examiner will have to deal with you more directly in the future.
- SPE: “I don’t want to get involved; please just work with the examiner.” Some SPEs simply don’t want to be bothered with some problems. While disappointing, this response at least indicates that “the man behind the curtain” that the examiner keeps referring to is, in fact, the examiner.
Which outcome is likely? There’s no way to predict: just roll the die and take your chances. But it’s a risk worth taking, because even disappointing outcomes will clarify your options.
Examination Type #9: Carrot on a Stick
The examiner’s position is clear, and perhaps valid. You interview the examiner to discuss the claims, and propose an amendment focusing on a specific variation that the references don’t teach. The examiner expresses approval: “That amendment will advance prosecution, and I might be able to allow it.”
The next office action presents a new rejection.
You interview the examiner again, focusing on a different rationale. Again, an optimistic statement is followed by a new rejection.
To be clear, these occurrences can arise legitimately during examination. An examiner may believe that a claim is allowable, only to later discover some new art (possibly from their primary or SPE) that requires a new rejection. Or, the examiner’s choice to allow a claim under 101 may be overridden by shifts in law and USPTO policy change. So even good-faith examiners can be forced to change their minds, and may even express regret at having to issue the new rejection.
But other examiners use this tactic routinely as a carrot-on-a-stick tactic: the allowance is always just barely out of reach. The examiner may indicate optimism about a claim amendment, even if he or she has no intention of allowing it. This tactic looks increasingly sketchy where it arises in several applications before the examiner, or where it occurs repeatedly in the same application.
- An examiner may actually initiate this process by calling you with a proposed amendment to put the case in condition for allowance – and when you make the amendment, the examiner will again reject it based on new art.
- The examiner may identify a dependent claim as “objected to as dependent upon a parent base claim, but allowable if rewritten in independent form.” However, when you present a new independent claim featuring the subject matter of claim 4, the examiner will reject it, asserting that you didn’t write the claim in exactly the way that they wanted – even if such differences may sometimes be extremely minor and stylistic.
- The examiner will completely agree with the argument presented during an interview – but when you present the exact same argument on paper, the examiner is no longer persuaded. Some examiners’ demeanor varies wildly between cooperative optimism in the interview, and open hostility in the office action.
You receive notification of an office action, and find, to your dismay, that it’s 48 pages long. You open it to find:
- An objection to the drawings;
- An objection to the title;
- An objection to the abstract;
- A 101 rejection of each independent claim, citing multiple grounds and several recent cases;
- A 112p1 / 112(a) rejection, arguing that a claim is somehow different from and not supported by the specification;
- A 112p2 / 112(b) rejection, arguing that a claim term isn’t adequately specific;
- Multiple rejections of the independent claims under 102 and 103;
- Six different 103(a) rejections of various subsets of the dependent claims, each citing a different combination of references; and
- Eight pages of explanation about why your arguments are not persuasive, with an extensive narrative about their understanding of the technical field.
You pour yourself a tall cup of coffee, and set aside the afternoon for review.
As you delve into the substance of each objection or rejection, you find that each one is easily addressed. The objections require only a minimal claim amendment. “Indefinite” terms have a clear definition on specification page 9, and you merely have to point to it to address the objection. The prior art rejections require only minimal claim amendments to emphasize the differences. Altogether, the voluminous rejection feels oddly empty – like a gigantic pillow that collapses to nothing when rested upon.
Nevertheless, preparing a complete, point-by-point reply requires nine hours. And a few months later, you receive the next office action in the case – which is 57 pages long, presenting different objections, and citing different prior art that isn’t any closer to your claimed techniques.
This examiner’s objective is not to achieve a fair resolution of the case. Rather, this examiner simply wants to bury your application under a huge stack of paper, and to throw every imaginable obstacle into your path – hoping to convince you that it’s hopeless. Prosecution becomes a battle of stamina: your client’s budget vs. the examiner’s will to refuse your application.
- This examiner loves laundry-list citations: “The portion of claim 1 providing ‘storing a reference count of the block table’ is taught by Reference X, paragraphs 3, 5, 7-12, 16-28, 37, 39, and 43-46, and Figs. 2, 3, 5, 7, 8, and 10(a) through 12(b).” If you ask the examiner to be more specific (citing 37 CFR 1.104, which requires that “the particular part of a relied-upon reference must be designated as nearly as practicable”), the examiner simply refuses, asserting that “all of them” show the claimed element.
- If you present arguments demonstrating a technical deficiency in the application of the references to your claims – e.g., a claim term that has no meaning in the references – the examiner might not give your arguments due consideration. Rather, the examiner may simply “extend” the references with the “knowledge of one of ordinary skill in the art” to bridge the gap, filling it in with speculation and links to Wikipedia. This tactic is so common that the CAFC has condemned it (K/S HIMPP v. Hear-Wear), as a rare exception to the extremely deferential nature of obviousness determinations.
- In exceptional cases, an examiner may be so determined to refuse your application as to issue a never-ending stream of 103 rejections, each citing different combinations of references. Simply put, you may never get to an allowance with this examiner.
- At a certain point, after several extremely lengthy office actions, you may suddenly be surprised to receive a notice of allowance. Alternatively, your application may have been abruptly transferred away to another examiner (who may promptly allow your application). There’s a good chance that the SPE has simply pulled the plug on the examiner’s obstructiveness.