Are you dealing with a difficult patent examiner?
According to this Yale study, about 88% of US utility patent applications will receive a first rejection. Getting a first Office Action in your nonprovisional patent application is simply par for the course. Welcome to the club called Nearly Every Utility Patent Applicant. But, how do you handle a difficult patent examiner when your patent application has received a third or subsequent Office Action? Let’s explore options.
Need to prevail over a difficult patent examiner or rejection? Contact US patent attorney Vic Lin at vlin@icaplaw.com to see if we would be a good fit.
Has your patent attorney spoken to the examiner?
Dialoguing with an examiner can uncover potentially effective next steps that would be impossible to ascertain through written responses. In a friendly conversation with a difficult examiner, an experienced patent attorney can pose potential claim amendments that might overcome pending rejections.
Skillful negotiation tactics are key.
What are your options when your patent description and drawings are limited?
Often, a patent rejection will cause inventors to see something different in their invention. The issue, however, is whether the description and drawings in the pending patent application sufficiently disclose those differences. The term specification refers to the written description and drawings, and you can only claim what is covered in the specification.
In other words, you cannot claim a difference in your invention if that difference is not sufficiently disclosed in your specification. That is why it is critically important that the initial filing of your utility patent application contain as much detail as reasonably known at that time.
You have to play with the cards you’re dealt. In responding to an Office Action, you cannot go beyond what is disclosed in your specification. You can, however, try to get a new hand. It’s called a CIP application.
How can you improve your patent application?
One strategy to overcome a difficult patent rejection is to beef up your specification, thereby giving you more features to claim. In turn, you can then argue that your updated claims cover unique features that distinguish your invention from the prior art found by the examiner.
This approach, however, comes with a cost and we’re not just talking about financial cost. The issue is timing. When a CIP is filed, the newly added subject matter gets a later filing date. As a result, more potential prior art may be used to reject the claims in your CIP app that include the new matter.
Filing a child CIP application may be an option in addition to, or in lieu of, an Office Action response in your parent application.
Can you request a new patent examiner?
It is very difficult to get a different examiner assigned to your patent application. In all likelihood, you will not be able to change patent examiners. Basically, you are stuck. Your more realistic option of getting someone else to review your patent application is to file an appeal.
Would adding features or specificity to the claims help overcome a difficult patent rejection?
Adding features or specificity to the claims can be particularly helpful in overcoming prior art rejections. When your claims are being rejected under Section 102 (anticipation) or Section 103 (obviousness), amending the rejected claims to include novel features can help overcome the rejections.
Chances are, your claims have gone through more than a few iterations if you are dealing with a difficult patent examiner. Before considering more drastic options, it may be worthwhile to consider whether any further features should be added to your claims. Keep in mind those features must be supported by the specification.
How do you get someone besides your difficult examiner to review your patent application?
To get someone else besides your examiner to review your application, you can file an appeal. After your appeal brief is filed, your patent will be reviewed by a trio of examiners called the examiner corps. As a group, they will decide whether to move forward with the appeal or possibly reopen prosecution.
Should you pursue previously restricted or withdrawn claims?
Often, a patent application will encounter a Restriction Requirement compelling the Applicant to elect certain claims while withdrawing others. If your elected claims are having great difficulty, you may want to consider filing a child application to pursue the non-elected claims.
Furthermore, you can amend the withdrawn claims and add new claims with different features. Now that you know what prior art references were cited against your current claims, use that knowledge to your advantage. Shape the claims in the child application to be more novel and less problematic.
For example, sometimes a utility patent application will include method claims in addition to claims that cover the apparatus, device or system. If the apparatus claims are having a difficult time, should you pursue the method claims instead? Even if your patent application originally omitted method claims, your specification might support some new method claims that can be filed in a continuing application.
Need to make progress with a difficult patent examiner?
Feel stuck with an unbudging patent examiner? Consider working with our crack team of patent attorneys with deep experience and insights into the inner workings of the USPTO. Contact US patent attorney Vic Lin at vlin@icaplaw.com to explore how we can help.
