How appeals can stop Examiner tricks that needlessly undermine patent applications

Patent Examiners are tasked with a daunting task of checking each patent application for compliance with all the patent laws and rules. Most importantly, the Examiner must show that the claims are not unpatentable, including being free and clear of prior art. And they must do all this within the time expectations that the USPTO offers.

But sometimes it seems like Examiners are engaged in a sophisticated game of cat-and-mouse. Some Examiner tricks, which aren’t expressly prohibited by the rules and incentives offered by the USPTO, cut corners to make their jobs easier. And some might say that the frequency of these games has increased in recent years. But left unchecked, the consequences of these tricks can undermine applications in serious ways.

To their defense, Examiners are allotted only a limited number of hours in the day to reach the bi-weekly expectation levels (or a bonus for ambitious Examiners). This expectation is driven by a simple formula:

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Source. As an example provided by the USPTO, let’s say that an Examiner works 36 hours a week. If the Examiner is starting out at GS7 in the complex field of satellite communications, this examiner is required to perform enough work to generate about 3.6 production units (or 7.2 counts) every bi-week (72 x 0.7)/27.7. That is the equivalent of 3 Non-Final Office Actions (1.5 counts each), 14 Final Office Actions (.25 counts each), 2 first-time RCEs (1.75 each), or 7 Notice of Allowances (.5 each) per week.

An Examiner drafting three Office Actions in a week would have 12 hours per Office Action. This is not quite two days of work for each application, to perform the search, consider the prior art, and draft the Office Action. No small task, especially with this complex subject matter.

On top of this, Examiners are cautious about allowing cases for fear that an allowed patent application does not meet a patent quality assurance threshold. In this case, an allowed case could get referred back to the Examiner to try again.

With these incentives in mind, it is easy to understand the first examiner trick: cutting corners on a quality first Office Action. Good examiners understand that a good initial prior art search sets the stage for the entire prosecution of an application. It’s best to conduct the best and most thorough search once, right at the get-go, applying the closest prior art references to the invention. Once this prior art search is done well, the Examiner can really just slightly modify the rejection as the applicant attempts to distinguish the claims.

But based on the allotted time given to examiners, it might take an examiner more than a few days to familiarize oneself with the claimed invention, perform the search, consider the prior art and draft the Office Action. Some Examiners cut corners with this initial search, applying references that are easiest to find, but not very related to the invention. But because the references may have snippets that can be arguably broadly interpreted to disclose aspects of the claims, the Examiner applies them and moves on. And because often times applications go through several rounds of prosecution, the Examiner may think to perform a better search down the road, with potentially more relevant prior art. This is bad for applicants for a number of reasons.

For one, it wastes money and time. Some Examiners become attached to their own work product and refuse to see error in the first Office Action. Thus, it can be difficult to persuade the Examiner to withdraw a rejection through argument alone. This behavior is reinforced by the USPTO not granting counts for a Non-Final Rejection do-over. So if claim amendments are not introduced, Examiners–hungry for RCE counts–typically issue a Final Rejection with little change to the original analysis.

Sometimes, Examiners offer to cut a deal where a claim amendment is introduced to distinguish the applied prior art references. Applicants, incredulous at being required to distinguish from very different prior art references, may take this option. But no proposed claim amendment is guaranteed to result in an allowance. Examiners may commit to overcoming the current rejection, but a revised rejection with perhaps a different prior art reference can easily be manufactured.

Thus, “working with” the Examiner may give the applicant false hope, leading the applicant to continue to try different claim amendments without committing to allowance. These Examiner-appeasing amendments carry no guarantee of advancing prosecution, and instead often drag out prosecution even through the RCE process, so that the Examiner can get more counts.

Besides expense and wasted time, each argument and/or clarifying amendment used to distinguish a prior art reference makes up the prosecution history estoppel. This is disadvantageous because it narrows the scope of coverage of the claims during enforcement of the patent. As the Supreme Court made clear in Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., an applicant that makes a claim amendment to comply with the Patent laws automatically assumes surrender of the territory between the original claim and the amended claim. This means that there is a presumption of surrendering all equivalents for the particular claim limitation that was narrowed by the amendment. For an application that has many amendments over many Office Action responses, the consequences can be substantial.

The second trick is the examiner requiring narrower claims than is required by the law. Even when an Examiner performs a very exhaustive search in the prior art, there is still no guarantee that a killer prior art reference is just around the corner. That is partially why Examiners will almost always want more narrow claims than are needed to overcome prior art so they can pass a patent quality assurance threshold. In general, the more features and claim elements the better for the Examiner to pass scrutiny. It can be tempting to pursue a strategy that pursues narrower claims to get a quick notice of allowance. But unless an Examiner can show why a more narrowing claim amendment must be made in a prima facie rejection, it is not a legally proper rejection.

The savvy patent practitioner knows that the fewer the claim amendments and the shorter the prosecution history, the better. An appeal early in prosecution (upon receiving a Final Rejection) can shortchange the negative implications of prosecution history estoppel. Rather than distinguishing and amending against a circulating set of unreasonable prior art rejections, the Board can decide the first unreasonable set. And if completely successful (no other grounds of rejection affirmed and no new rejections by the Board), a Notice of Allowance should issue. Plus, with Anticipat Research, you can see the reversal rate for your specific ground of rejection for your specific Examiner, art unit, tech center, etc.

Quit playing games and instead be strategic. That is why appealing can be a good solution.

One response

  1. Pingback: Is an appeal an underutilized patent prosecution procedure? Yes | Anticipat Blog

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