PharmaPatents Timely Insight on Emerging Legal Developments

Five Requests For Examiners

Posted by Courtenay Brinckerhoff on Posted in Patent Office Practice

I’d like to respond to Director Kappos’ blog posts on "Five Tips for Practitioners" and "Ten Tips for Streamlining Patent Prosecution." First, I want to emphasize that I believe that patent prosecution should be a cooperative process, with practitioners and examiners sharing the same goal of issuing the broadest valid patent to which the applicant is entitled. I also want to acknowledge that applicants sometimes pursue strategies that complicate and prolong prosecution. Still, I believe that there are at least a few things that examiners can do to promote compact prosecution. 

  1. Read the specification. Before rejecting a claim under 35 USC § 112, review the specification for definitions of the "indefinite" term. 
  2. Read the cited reference, not just the abstract. MPEP § 706.02 requires citation of the underlying document in most circumstances. The underlying document may make the rejection stronger, may show that the reference is non-analogous art, or may include a teaching away.   
  3. Keep Office Actions succinct. When writing a subsequent Office Action, it is not necessary to copy and paste the original rejections. Instead, focus on any refinements to the rejections and why you are maintaining them. This will make it easier for applicants to identify what progress has been made and what issues still remain, and could save a few trees. 
  4. Prepare for interviews. Ask the applicant to provide an outline of proposed claim amendments and/or arguments, and review those, ideally with your supervisor (if applicable). With only 30 minutes allotted for an interview, reviewing an outline in advance can make the interview more productive.
  5. Allow claims. OK, I had to slip this one in. As noted above, I think we share the same goal here. Don’t take "ownership" in your rejections such that withdrawing a rejection (in view of explanations, amendments or evidence) amounts to defeat. Work with applicants to identify the broadest valid claims and then help them secure their Constitutional and statutory rights to a patent. 

 

  • Tom McKenzie

    Do you have any idea how little time is allowed to the Examiners by the PTO per case? Simply trying to follow your request #1 would far exceed that time limit. I know, I tried on my first few cases. Your request #2 would take so long that is almost silly.

  • pharmaxminer

    I have to agree with Tom.
    With regard to #1, though, I do agree that the Examiner should refer to the specification for definitions before making a 112 indefinite rejection, when it comes to actually reading the specification in its entirety, it’s hard enough for a pharma examiner to find art and address all of the limitations in the claims given the amount they are given -many specifications are be several hundred pages long…
    Also, how come there’s no suggestions on how practitioners can promote compact prosecution… Certainly, there are MANY things that can be done on their part. For instance with #4, sending a fax to the examiner with regard to possible claim amendments and arguments before the interview can be very helpful, since it allows the examiner to focus their review of the case on what the applicant would like to discuss.

  • Courtenay Brinckerhoff

    Thank you both for your comments.
    This article is one-sided towards examiners because it is responding to Kappos’ blog post that was one-sided towards applicants.
    With regard to #2, I am talking about references that are applied in a rejection, not all references that are cited in the specification or submitted in an IDS. Still, I understand that it could be hard to review lengthy patent documents in the time allotted.
    pharmaxminer – I think we agree on #4. An examiner can request – and an applicant can submit – an outline prior to an interview to make the most of the interview time.
    ~Courtenay