It is almost always in an Applicant’s best interest to maintain the best working relationship possible with an Examiner. After all, a happy Examiner is more likely to be a helpful Examiner. Also, despite the high turnover at the USPTO, you may very well be working with an Examiner again. So, staying on an Examiner’s “good side” is often good business.
There are many ways to get on the bad side of an Examiner. Some ways are obvious, while others may not be. An exhaustive list is impossible because just like every application, every Examiner is different. Nonetheless, from my many discussions with Examiners over the years, here are five sure-fire ways to get on your Examiner’s bad side.
#5 – File multiple after final papers.
Remember – Examiners don’t get production credit for issuing Advisory Actions.
#4 – Present only a general argument with only generic citations to several pieces of art, without an explanation as to how the art supports the argument
Comment – It appears to me that leaving the grunt work to an Examiner is both unfair and a recipe for a poor Office action in response. Besides, specific citations of evidence tend to make an argument more persuasive. Also, keep in mind the requirements of 37 CFR 1.111(b):
In order to be entitled to reconsideration or further examination, the applicant or patent owner must reply to the Office action. The reply by the applicant or patent owner must be reduced to a writing which distinctly and specifically points out the supposed errors in the examiner’s action and must reply to every ground of objection and rejection in the prior Office action. The reply must present arguments pointing out the specific distinctions believed to render the claims, including any newly presented claims, patentable over any applied references.
Moreover, general arguments do not help a pre-appeal request for review because an Applicant cannot direct the panel back to the record when that record lacks specificity.
#3 – Submit a needlessly lengthy response inflated with numerous boilerplate paragraphs
Comment – No examiner needs a legal primer on the law of anticipation. Responses with paragraph after paragraph of boilerplate explanations of §§ 102 and/or 103 tend to lack clarity and can pose a challenge to even the most interested reader. Examiners are human and their natural inclination is to skip such paragraphs. This means that they may miss relevant, persuasive arguments, if they are embedded in or near these paragraphs. This also means that an Applicant is wasting resources writing paragraphs that will not be read by the Examiner.
Here, I would suggest taking a look at my earlier blog post on this subject.
#2 – Use uncommon terminology when there
are perfectly good and commonly acceptable terms of art
Comment – Under MPEP § 2111.01(IV) an applicant is entitled to be his or her own lexicographer. But, when an applicant chooses not to characterize an invention in terms that are consistent with commonly used and familiar terminology, he or she potentially impedes the examination of the application. For example, uncommon terminology makes an Examiner’s searching more difficult (i.e., time consuming). With limited time to examine an application, why force an Examiner to spend more time on the art search to the potential detriment of the Office action?
#1 – Attempting to bully an Examiner at an interview
With good fortune, you will be working in the patent profession for many years to come. With some misfortune, you will be back before that Examiner you just tried to bully. Enough said.
1. Asserting that a rejection is somehow incorrect/deficient because claim features you just amended or added were not addressed in the rejections and/or are not found in the art. It seems both illogical and insulting to assert error based on claim features that were not present when the rejection was made. Instead, consider the following approach:
Without conceding the propriety of the Office’s characterization of the Smith widget, Applicant respectfully submits that Smith cannot teach the widget of claim 1, as presently amended.
2. Responding to a rejection by adding more claims with different combinations of previously presented limitations just to see if the new claims might be patentable, especially when (1) the original claims are left unchanged and/or (2) the applicant has argued that a rejection is traversed because the previously presented claims define over the cited art.
3. Reaching an agreement during an interview and then doing something completely different in the next response, without any explanation at all.
© 2010, Michael E. Kondoudis
The Law Office of Michael E. Kondoudis
DC Patent Attorney