Intellectual Property Directions

Let’s face it. When the patent examiner assigned to your application is too busy or too, well, intellectually unprepared, to examine your application properly, you usually end up paying more to get your patent issued than you should have to.

For example, recently a client was forced into paying for “continued examination” because the examiner had objected to several claims without even reading the specification with anything more than a passing glance. While admitting he had misunderstood a very basic claim term (which was fully described throughout the specification), the examiner effectively insisted that we make a clarifying (not limiting) amendment to the claim, rather than him just allowing the claim or making an examiner’s amendment. He didn’t want it on his record that he made a mistake – this way, to the world, it looks like we agreed that the claim needed amendment.

The examiner’s misunderstanding that led us into this situation might have (almost certainly would have) been avoided if we had been able to make use of a newly expanded pilot program at the patent office. Called the First Action Interview Pilot Program, this program allows you and attorney to have an interview with the examiner before he or she even issues a first office action. The idea, at least, is that the examiner will send you what he is thinking about your claims before committing them to a formal office action and you get a chance to set him straight – or at least point him in the right direction.

To read more about this program, see http://www.uspto.gov/patents/init_events/faipp_full.jsp for the official word or see this Nutter publication for a nicely summarized explanation.

I have to keep my fingers crossed that this pre-office action interview will provide a vehicle of non-adversarial (or less adversarial) discussions of the examiner’s concerns since the examiner will not have committed him or herself to the objection yet.

It certainly would have worked for my client.

This entry was posted on Monday, September 19th, 2011 at 4:41 pm and is filed under Examiner, Patent examination reform, Patent Prosecution. You can follow any responses to this entry through the RSS 2.0 feed. Responses are currently closed, but you can trackback from your own site.