About four or five years ago, you filed a patent application. Since then, you have been asked to spend money for additional filings (first international, then “national phase”), and then you had an examiner in an Office Action (examination report) tell you that you are not entitled to a patent for a bunch of reasons expressed in language that ordinary people don’t understand. Your patent attorney said, “Leave it to me” (and billed you again) and then asked you to approve a written response. You gave your approval and thought that was the end of the story.

Since you have a full-time position at your company, and handling patent matters is just one of your many responsibilities, the amount of time for understanding the patent examination procedure was limited. You understandably relied on your patent attorney to take care of the process with minimal disturbance to you. That is fair, but it can deprive your patent attorney of important insight that may speed up and simplify patent examination. The following explanation can help you better understand where your application stands.

You just received another Office action from the same examiner saying you are still not entitled to a patent, despite that written answer you provided. What should you do?

First, make a serious effort to understand the examination procedure in general and how your case is proceeding.

Did the first answer make any of the reasons for rejection go away? If it did, you made some progress. If it did not, you need to understand why not.

Does the second Office action include new grounds of rejection that were not in the first Office action? If it does, that means the first answer was good enough to make the Examiner change his position. That is a type of progress too.

Next, try to get involved in formulating a response strategy. As the inventor, you understand your invention better than most people. Read the Office Action carefully. Compare what the examiner claims the cited references say to what the cited references actually say. Often there is a difference that can provide the basis for a technical argument against a rejection. As the inventor, you may see these differences more easily than your patent attorney.

If there do not seem to be any differences like that, maybe the answer to the second Office Action should be about the law instead of the invention. This requires your patent attorney to do most of the work in formulating a legal argument. There are rules for examination, and if the examiner is not playing by the rules, it is legitimate to question the validity of the rejection(s) without saying anything at all about the invention.

Whether your arguments are legal or technical, supporting them with evidence when appropriate is important. Evidence can be in the form of expert declarations (from the inventor or other experts), quotes from the cited references and/or the application under examination, or publications you believe are relevant that were not cited by the examiner.

In many cases, requesting a telephone interview with the Examiner can be productive. Some Examiners are helpful in an interview in a way that they would not be in writing. For example, in an interview, it is possible to ask an examiner to suggest specific claim language that would address an issue to their satisfaction.

Finally, try to understand how Examiners see the world. The examiner may not want to allow your case until there have been several Office Actions. Typically the first office action requires the greatest number of work hours, and subsequent office actions require much less work time. In addition, the patent office reviews a sample of allowed applications for “quality assurance.” An application that is not allowed is never reviewed. That means that from the examiner’s perspective, saying no is the safest thing to do.

Armed with this understanding, you are in a position to play the game effectively.

Author Dr. Sinai Yarus