Comments on: A Few Ways To Get On The Bad Side Of Your Examiner http://patentablydefined.com/2010/02/02/a-few-ways-to-get-on-the-bad-side-of-your-examiner/ A practical patent prosecution blog published by Michael Kondoudis Mon, 23 Apr 2012 10:38:57 +0000 hourly 1 http://wordpress.org/?v=3.3.2 By: patty http://patentablydefined.com/2010/02/02/a-few-ways-to-get-on-the-bad-side-of-your-examiner/comment-page-1/#comment-4868 patty Fri, 05 Mar 2010 00:42:10 +0000 http://patentablydefined.com/2010/02/02/a-few-ways-to-get-on-the-bad-side-of-your-examiner/#comment-4868 Applicants are entitled to an AA if they file a Response within 60 days of a Final Office Action. A practitioner is remiss if he/she doesn't try to file the Response within the 60 days so that an AA will be issued before a decision must be made whether or not to file an appeal without having to pay ext. of time fees. A practitioner should not weigh examiner count into the decision of filing the After Final Amendment within 2 months. Applicants are entitled to an AA if they file a Response within 60 days of a Final Office Action. A practitioner is remiss if he/she doesn’t try to file the Response within the 60 days so that an AA will be issued before a decision must be made whether or not to file an appeal without having to pay ext. of time fees. A practitioner should not weigh examiner count into the decision of filing the After Final Amendment within 2 months.

]]> By: examiner jane doe http://patentablydefined.com/2010/02/02/a-few-ways-to-get-on-the-bad-side-of-your-examiner/comment-page-1/#comment-4866 examiner jane doe Mon, 01 Mar 2010 05:28:51 +0000 http://patentablydefined.com/2010/02/02/a-few-ways-to-get-on-the-bad-side-of-your-examiner/#comment-4866 Please add to the list: Canceling all the claims and adding all new claims. Or even just adding on a large number of new claims. I would also bump up number 5 to number 1. But that is just my opinion. ;) Please add to the list: Canceling all the claims and adding all new claims. Or even just adding on a large number of new claims.

I would also bump up number 5 to number 1. But that is just my opinion. ;)

]]> By: mike http://patentablydefined.com/2010/02/02/a-few-ways-to-get-on-the-bad-side-of-your-examiner/comment-page-1/#comment-4865 mike Fri, 26 Feb 2010 19:00:31 +0000 http://patentablydefined.com/2010/02/02/a-few-ways-to-get-on-the-bad-side-of-your-examiner/#comment-4865 Dear Babel Boy, thank you for your thoughts. I'm not sure that I was advocating an approach as much as I was warning practitioners that they can easily and perhaps unknowingly upset an Examiner. Dear Babel Boy, thank you for your thoughts. I’m not sure that I was advocating an approach as much as I was warning practitioners that they can easily and perhaps unknowingly upset an Examiner.

]]> By: Babel Boy http://patentablydefined.com/2010/02/02/a-few-ways-to-get-on-the-bad-side-of-your-examiner/comment-page-1/#comment-4864 Babel Boy Tue, 23 Feb 2010 17:44:24 +0000 http://patentablydefined.com/2010/02/02/a-few-ways-to-get-on-the-bad-side-of-your-examiner/#comment-4864 I disagree with your premise that the best policy is to suck up to the examiners so they don't dork you somewhere down the road. Although I do agree, as almost always, with most of the specific recommendations you make. I would rather forgo the easy allowance and happy examiner and go to the CAFC with, or have my client litigate, a solid claim that wasn't unnecessarily amended to appease the examiner. Over and over you see the CAFC blaming the claim drafter for the poor claim, and we all know the reason was that the claim drafter was trying to save the client money by taking whatever the examiner threw out just to keep the examiner happy. My job is not to entertain or appease examiners. I would suggest that practitioners treat examiners fairly within the rules and if the examiner fails to reciprocate and games the system, do what is right and forget about how the examiner feels about you. I disagree with your premise that the best policy is to suck up to the examiners so they don’t dork you somewhere down the road. Although I do agree, as almost always, with most of the specific recommendations you make.

I would rather forgo the easy allowance and happy examiner and go to the CAFC with, or have my client litigate, a solid claim that wasn’t unnecessarily amended to appease the examiner.

Over and over you see the CAFC blaming the claim drafter for the poor claim, and we all know the reason was that the claim drafter was trying to save the client money by taking whatever the examiner threw out just to keep the examiner happy. My job is not to entertain or appease examiners.

I would suggest that practitioners treat examiners fairly within the rules and if the examiner fails to reciprocate and games the system, do what is right and forget about how the examiner feels about you.

]]> By: mike http://patentablydefined.com/2010/02/02/a-few-ways-to-get-on-the-bad-side-of-your-examiner/comment-page-1/#comment-4862 mike Tue, 09 Feb 2010 18:49:01 +0000 http://patentablydefined.com/2010/02/02/a-few-ways-to-get-on-the-bad-side-of-your-examiner/#comment-4862 Dear Kip, thanks for the comment. There is nothing "wrong" with doing this. Just keep in mind that you are creating more claims to examine, without new justifications. This takes time. Moreover, the Examiner may have to carefully study what you have submitted so nothing gets by him/her to be found in a quality review. Dear Kip, thanks for the comment. There is nothing “wrong” with doing this. Just keep in mind that you are creating more claims to examine, without new justifications. This takes time. Moreover, the Examiner may have to carefully study what you have submitted so nothing gets by him/her to be found in a quality review.

]]> By: Patent Girl http://patentablydefined.com/2010/02/02/a-few-ways-to-get-on-the-bad-side-of-your-examiner/comment-page-1/#comment-4861 Patent Girl Wed, 03 Feb 2010 22:58:32 +0000 http://patentablydefined.com/2010/02/02/a-few-ways-to-get-on-the-bad-side-of-your-examiner/#comment-4861 I just discovered your website, which gives great practical advice. Have you seen the latest guidelines on 101 from the Director of the PTO? The memo is dated 1-26-2010 and recommends amending 'non-transitory' to the claim, if the subject matter is covered by the specification. Thanks, Patent Girl I just discovered your website, which gives great practical advice.

Have you seen the latest guidelines on 101 from the Director of the PTO? The memo is dated 1-26-2010 and recommends amending ‘non-transitory’ to the claim, if the subject matter is covered by the specification.

Thanks,
Patent Girl

]]> By: Kip http://patentablydefined.com/2010/02/02/a-few-ways-to-get-on-the-bad-side-of-your-examiner/comment-page-1/#comment-4860 Kip Wed, 03 Feb 2010 01:48:36 +0000 http://patentablydefined.com/2010/02/02/a-few-ways-to-get-on-the-bad-side-of-your-examiner/#comment-4860 What's wrong with Honorable Mention #2? As long as you provide reasonable arguments for the unchanged claims, I don't see what is wrong with adding claims. In fact, adding claims seems like a good idea when your arguments for the unchanged claims are not slam dunks. Why add limitations to the independent claims unless you absolutely have to? What’s wrong with Honorable Mention #2?

As long as you provide reasonable arguments for the unchanged claims, I don’t see what is wrong with adding claims. In fact, adding claims seems like a good idea when your arguments for the unchanged claims are not slam dunks. Why add limitations to the independent claims unless you absolutely have to?

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