Last week, I had a refreshing and unusual telephone conversation with a patent examiner from the United States Patent and Trademark Office (USPTO). The examiner called me to discuss a patent application I had filed for a client. More specifically, he called because he had identified “allowable subject matter” and wanted to send me proposed claim amendments to put the application into condition for allowance, meaning it could proceed to the next step in the process of having a patent granted. While this might not seem like anything special — this was something I had never experienced in 18 years as a patent attorney.
My conversation with this examiner was refreshingly unusual for three reasons. First, the examiner called before issuing the first Office Action. (An Office Action is a written notice from the patent examiner that states your patent application cannot be granted as written, usually with an option to submit a revised application or arguments as to why the examiner is wrong.) Examiners never call before issuing an Office Action. Examiners always issue an Office Action first – and then I, as the applicant’s lawyer, have to then initiate a formal “telephone interview” in order to speak with the examiner about anything substantive. Second, the examiner had clearly made an attempt to understand this invention as disclosed in the specification. Normally, examiners make no discernible attempt to understand the disclosed invention. They simply focus on knocking out the claims with prior art. Third, the examiner proposed claim amendments that put the application into condition for allowance. Prior to this, I’ve never had an examiner propose claim amendments; they rely on the applicant or their attorney to propose claim amendments when there is a problem with the original application.
During my conversation, I mentioned to the examiner how refreshing it was to be working with the examiner to find allowable subject matter, rather than arguing with the examiner in response to a first Office Action. In response, the examiner told me that over the years he had changed the way he examined patent applications. When he first started examining patents, he took a more traditional approach: focusing merely on claim rejection and issuing Office Actions in support of his rejections. But after his supervisor pointed out (1) that he had a much lower allowance rate than his peers and (2) that he was much slower than his peers in reaching allowance or final rejection, he decided adopt a new approach. Now, from the very beginning of his examination, he tried to understand the invention disclosed, not just the invention claimed. Then as he searched the prior art, he kept an eye out for ways that the disclosed invention was different from the prior art. If he found any differences, he would call the applicant before drafting an Office Action. He found this new approach to be a much more efficient, effective and rewarding way to examine patents – a breath of fresh air for patent applicants, indeed!
Applying for a patent through the USPTO is a challenging process, one that can easily take 1-3 years, even in the best of circumstances. If you pursue a patent to protect your intellectual property, it is important that you partner with an effective patent attorney who can shepherd your application through this process and help you avoid costly mistakes. In the worst-case scenario, your first patent application may be rejected and you’ll be barred from submitting the same idea for patent again.
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