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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.

New patent practitioners are often trained to pursue patent prosecution zealously: to file the broadest claims possible, and to argue aggressively for their allowance. Some practitioners hold low regard for the competency of patent examiners, and come to regard prosecution as an exercise in frustration – prompting comments like this:

Problem number one with the PTO is the examiner corp. With rare exception, they do not approximate the sharpest tacks in the box, nor is the examination regime geared to sharpening them. Every prosecutor has his own nightmares to tell of examiner inanity. On more than one instance I’ve abandoned an application over prior art found by an examiner, but for which the examiner did not cite the right passages, and couldn’t even write a decent rejection, thus failing to either fully appreciate or adequately articulate what he had found.

And this:

Does the PTO even try to train examiners about how to properly issue a species restriction? The MPEP itself states “Claims are definitions or descriptions of inventions. Claims themselves are never species.” MPEP 806.04(e). But as sure as the sun rises, my next species restriction will list a group of claims as though they are a species.

And, of course, this memorable example:

Numerous examples abound in terms of this particular Examiner not following the law. Clearly, the combination of references would render the final product to be inoperable for its intended use. However, for this Special Needs Examiner, logic just doesn’t cut it. It is manifestly clear that this Examiner has a huge financial incentive to reject patent applications so he gets a nice Christmas bonus at the end of the year. When in doubt, reject right?

Patent examiners, too, often regard applicants as an opponent (rather than as the customer of their services!), and occasionally express mistrust of the practitioner and contempt for the applied-for invention. While many examiners strive for accuracy and a suitable resolution of the application, some examiners still view their role as that of a goaltender – like this:

During a trip to the PTO for an Examiner interview, I passed by the office of Examiner X with a sign that stated “0% allowance rate ☺ [ed.: smiley face].” Evidently, the smiley face was inserted to add insult to injury. I asked the examiner that I was with if Examiner X really had a 0% allowance rate, and she said “yes.” I asked why this was the case, and she stated, “some examiners believe an allowance is an affront to their being.”

Examiners’ attitudes about practitioners also emerge in comments like this:

This is what I have to say about patent attorneys. I will send you a copy of the MPEP and read it. You are getting paid like a ridiculous mad man so why don’t you act like one and get on your job and stop wasting our time. And once in a while how about amended the claims so they are allowable. That would be nice for both our sakes.

And this example from a Reddit AMA:

The work was frustrating because even if something was ridiculously obvious, you pretty much always had to have a reference that discussed it…and even then, the lawyer would usually come back and say something ridiculous like “oh well this widget is blue and mine is green, so it’s not obvious”. Every so often, you would be able to get away with using Official Notice, where you claim something is so well known that you don’t need a reference for it, but that was pretty hard to get past the Primary that was signing off on your stuff.

Dealing with the responses that I got were a pain as well, because they’d change a couple of words just enough so that I’d have to go off and find some other b***s*** reference to read on it again, or they’d just argue that I was wrong, even when they were just trying to patent the same type of Single Sign On system that people have been using for years (which a lawyer from Google argued with me about for a while).

While both communities generally maintain a high level of professionalism, the competitive attitudes under the surface occasionally spill over into internet forums and heated anonymous exchanges.

These attitudes are certainly not new, and they reflect that each side has a primary objective: the practitioner wants an allowance with broad claims; the examiner wants a rejection (or, at least, constraining the claim scope until it satisfies “the one-hand rule”).

However, public attention to the patent system has radically shifted the dynamics of the relationship. Beyond the outcome of rejection vs. allowance, both the practitioner and examiner must beware the following scenarios:

These scenarios harm everyone: the applicant, the patent system, the field of technology, the public interest. And they require careful attention, by both the applicant and the examiner – over and beyond the allowed-vs.-rejected outcome of examination and prosecution.

Accordingly, in today’s patent system, the practitioner and examiner share the responsibility of ensuring the avoidance of all of these problems. Of course, each role remains distinct and focused – the practitioner drafts the claims and argues on behalf of the applicant; the examiner finds references and spots issues in the application. Nevertheless, each participant has a vested interest in reducing errors or bad choices by the other side: a missed opportunity to address an issue during pendency can amplify the problem when encountered later.

  • A good patent issues that reasonably covers the scope of the invention. To this end:
    • Examiners should give due credit to the merit of the invention, and work toward an allowable claim set rather than allowance only as a last resort; and
    • Practitioners should appreciate when an examiner cites prior art that requires a narrowing of the claims, rather than such prior art first appearing during litigation and invalidating the patent.

  • The claims are not overbroad, do not contain problematic claim terms, and are likely to be upheld by a court. To this end:
    • Examiners should proactively suggest options for resolving ambiguity, rather than repeatedly rejecting the claims without recourse; and
    • Practitioners should appreciate when examiners identify an area of reasonable claim ambiguity that might result in an invalidation.

  • The claims recite an invention in enough detail to defend against unfair criticism. To this end:
    • Examiners should provide, in the notice of allowance, a detailed explanation of why the allowed claims are different from and meaningful over the cited references; and
    • Practitioners should be willing to explain these aspects on the record during prosecution, and amenable to examiners’ suggestions for improving the targeting of the claims.

  • Each round of examination enables efficient progress toward the right result. To this end:
    • Examiners should fully read the specification to understand the invention from the start of examination, in order to avoid reaching a hasty and incorrect conclusion about the merit of the application;
    • Examiners and practitioners should fully consider each other’s arguments before formulating an opinion; and
    • Examiners and practitioners should proactively work together to avoid logjams where the same office actions or replies are being repeatedly issued, by utilizing the array of additional tools, such as examiner interviews, consultation of the SPE or director, and pre-appeal briefs.

In summary, the examiner / practitioner relationship no longer resembles the relationship in baseball between the pitcher and batter (for European readers: the relationship in cricket between bowler and batsman). Today, the relationship is more like the pitcher and catcher: collaborating to ensure that the ball fits within the strike zone, and can’t be knocked out of play by a third party.

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