101 Final Rejection Examiner Cites New Art After Rce

Information technology's natural to trust the examiner and approach things like a lawyer while prosecuting patent applications. Notwithstanding, it may not e'er exist the correct form of action to become the patent granted.

Greetings, my name is William Morriss. I am a patent attorney. I have been practicing for over fifteen years now. Today, I will walk yous through iii mistakes to avert when responding to office actions. The first ii are mistakes that I've seen people make while training them on drafting responses. The terminal one is 1 that I made when I was start learning. Fortunately,  my mentor taught me how to avoid that mistake for the future.

3. Trusting the Patent Examiner

2.  Focussing on but the independent claims

1. Approaching things too much like a lawyer

So, let's begin with mistake number 3.

3. Trusting the Patent Examiner

I am not saying don't cooperate or interact with your patent examiner. You really should, because, ultimately, you both need to reach an agreement. If you get in with a mindset of conflict:

• I'm going to beat this person,
• I'm going to destroy this person,
• this person is an idiot, and
• they take nothing to say;

it's going to be hard to get to an agreement with them. So information technology's non about you lot beingness aggressive or being confrontational with the examiner.

It's more most recognizing that you and the examiner are different people .

When you set the patent awarding, it has claims that yous idea were reasonable and should be supported. However, the examiner is a different person reading with dissimilar eyes. The examiner spends much less time reviewing the patent application than y'all did writing it. They have less understanding of the invention, and they may very well get things wrong.

I remember an example where an acquaintance that I was grooming nearly got into trouble by trusting the examiner. In this case, the examiner said, "Oh, you know, this term in your claims, I'one thousand going to translate information technology this style." The result of that interpretation was that the invention became treated as non-patentable subject matter, which the examiner rejected under S.101.

As information technology happened, I had written this example and knew nigh this issue. I had included an explicit definition of the term the examiner was interpreting that fabricated it very articulate the invention was non subject thing ineligible. The examiner had overlooked it. The acquaintance  took the examiner's reading at face value and concluded that nosotros needed to amend the claims. This is a very common mistake, equally it is quite natural to attach a certain authority to the estimation fabricated past the examiner. But in fact, it turned out that we managed to overcome the rejection without needing to make an amendment.

In general, it is good if you can answer to rejection without amending your claims, that means:

• You are non giving upward on the scope, and
• You are non potentially causing a alter on the grounds of rejection

It is essential to know that the examiner may be incorrect. When you wrote the claim, you did not write it thinking it's non eligible or supported. You wrote claims that you idea were eligible, supported, and innovative .

two. Focusing Only on the Independent Claims

Another common mistake that I've seen in exercise is focusing just on the contained claims and non looking at dependent claims.

Focusing on independent claims seems rational because, to become a patent, you have to reach an agreement on at to the lowest degree one of them. The independent claims are probably the broadest and most commercially viable. However, dependent claims take a purpose as well. Dependent claims are built-in fallbacks. In that location is a reason you wrote them and put them in there.

When claims get rejected, you must effort to go the rejection withdrawn. You can probably practice this by inserting the dependent claim'due south limitations into the independent merits. Then, the examiner would either have to allow it or give yous another not-final action. This is skilful because yous don't take to request for continued examination (RCE), which volition delay things and price your client coin.

Y'all won't go this result if you focus simply on the independent claims and endeavor to make minor changes and clarification while still going for basically the same things as you had before. The trouble is that when you make that change, you might not go anything at all, or, based on your change, a new footing of rejection may come up that can be fabricated final. You volition so need to:

• Do a new RCE
• Pay money
• Lose patent term
• Become delayed

Sometimes that is the correct thing to do. However, it'due south ameliorate to avert information technology if you tin. Working with the dependent claims is a good style to avoid that happening.

ane. Approaching Things too Much like a Lawyer

This is a mistake I made when I was existence trained. Fortunately, my mentor caught the fault and removed it, so information technology did not exit in the office action response. I was freshly out of law schoolhouse, at the time, where they teach you all these cases; yous learn about claim construction, prosecution history, disclaimers, pleadings and pleadings in the alternatives. These may all make sense in litigation merely may non really work in patent prosecution.

For example, you lot might have a rejection where the prior art says information technology has features A, B, and C. The examiner states that a paragraph touches element X with features A, B, and C. Yous might exist confused about which of the features the examiners are relying on.

In response to the rejection, you could write a very logical, intricate, precise, and sophisticated statement about how the examiner is incorrect regarding the features. But information technology does non help you in any style.

First of all, it would be very confusing and won't help you move frontward with your case. Secondly, you take to write a lot. Some of this writing would be unnecessary and irrelevant, and worse, could potentially exist used confronting you in prosecution.

Another example is arguing about the inconsistencies in the patent examiner's estimation of the claims based on your preparation about claim construction from law schoolhouse. This will not aid your case either, equally under the broadest reasonable interpretation rule (BRI), examiners have a groovy deal of discretion and leeway while interpreting claims.

The better approach

Treat prosecution differently. Rather than responding with a lawyer's mindset y'all tin can:

• amend claims
• accept an interview with the examiner to empathise the differences in interpretation

By the stop of the conversation, you won't have to go through the rabbit hole of A, B, and C and alternatives, or interpretations and merits constructions. You would have figured information technology out together with the examiner without the arduous process of lengthy writing.

At the conclusion of the interview you might notice that yous take to make a alter, or perhaps you volition have antiseptic things then that a alter is unnecessary. It is too possible that you lot might non ultimately hold with the examiner, but the interview would have at least given you the opportunity to know what is happening. In this instance information technology will have helped you figure out that you need to brand an entreatment.

So what practice I do to avoid these mistakes in my exercise today?

Means To Avert Mistakes

1. Interviews:

This is an fantabulous tool to make sure things are on track. If in that location is time for information technology and you can get information technology, interviews are near ever good to have.

2. Talk to senior colleagues:

I am fortunate to piece of work with colleagues who accept been in practise for a long time; since I was in high school, in some cases. If I have questions or I'one thousand uncertain nearly how to go about things, I can talk to them. This gives me the do good of experience that extends a decade or more than beyond my own.

3. Make utilize of past cases:

In that location is a wealth of information that you can get from file wrappers and past cases, especially for issued patents, which are a matter of public record.

At IP Toolworks, we have designed the Arguminer software to help you mine arguments other attorneys have used to avert pitfalls in their own prosecution practices. This can be helpful if you accept a 101 rejection, for example, as this is a very dynamic aspect of law. Fifty-fifty the experience of more senior colleagues might not help as much considering the law keeps changing.

With the software y'all can apply a date filter to ensure your upshot conforms with the current gold standard for what examiners look out for, and insert other search criteria to find examples that lucifer your specific examiner or arguments y'all are considering. The Arguminer software can also be used to see examples that did not work for a detail instance. Seeing battle-tested arguments and their outcomes can assistance you both avoid repeating mistakes that other people made and capitalize on their success.

Let's Sum it Up

The three mistakes that people make when responding to function actions are:

• Approaching things too much like a lawyer rather than engaging in in-depth communication with their patent examiner to reach a mutual understanding;
• Focusing exclusively on contained claims, rather than focusing on the independent claims along with the dependent claims; and,
• Trusting the decisions of the patent examiner without making a personal analysis of the decision.

To avoid these mistakes in your office activeness responses, it tin can be helpful to make use of past cases, interview the patent examiner, if you tin can, and leverage the experience of senior colleagues.

You lot may like to read – "3 Inspiring Office Activity Responses from Techs where 101 Rejections are Rare"

          Disclaimer - "The statements and views expressed in this posting are my own and exercise not reflect those of my law business firm, are intended for full general advisory purposes only, and do not constitute legal advice or a legal opinion."        

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Source: https://iptoolworks.com/category/patent-prosecution/

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