When an inventor files a patent application with the US Patent & Trademark Office (“USPTO”), one of the first steps in the patent process is the assignment of a patent examiner to the application. One can think of a patent examiner as a “case worker” for the patent application. The patent examiner is an attorney with experience in patent law. The USPTO provides patent examiners with training on how to process applications and with respect to the legal requirements for issuing a patent. More specifically, a patent examiner does the following:

• Reviews the application to ensure that it complete
• Reads the invention set forth in the application
• Reviews and determines the scope of the claims
• Searches “prior art” related to the claims to determine whether the invention is novel and/or non-obvious
• Ensures other legal requirements are met
• Ultimately, makes a determination on patentability of the claimed invention

The patent examiner also engages in other administrative tasks like initiating correspondence with the applicant — called “Office Actions” — which might ask questions, seek additional information/data or identify “problems” with the patentability of the claimed invention. In addition, the patent examiner will respond to an applicant’s correspondence, will issue various official Notices like a Notice of Allowance or Abandonment and will ensure all other procedural steps are taken.

If you are a small business or micro-entity trying to obtain a patent, it is important to understand that you will receive correspondence from your patent examiner and it is important to respond in a timely fashion with pertinent answers.

In addition — and this is important — the patent examiner will take phone calls and engage in one or more official “patent examiner interviews.” These interviews can take place in person, over the phone or via video conference.

If you are a small business or micro-entity trying to obtain a patent, it is important to avail yourself of these options to talk in person to your patent examiner. Talking is often more effective than writing. Officially, a patent examiner cannot say whether or not the invention is patentable. That will be an official determination. But, a patent examiner can discuss a lot of important information including the following:

• What prior art did the examiner examine?
• Did the examiner identify any relevant existing inventions or public disclosures?
• What “problems” might result from prior art, existing inventions or public disclosure?
• Would it be helpful to adjust any of the claims made in the application?
• Or, would it be helpful for the applicant to make other adjustments to the application?
• Is something missing from the application or should more detail be provided?
• And more

Often, this information is contained in the written correspondence. But it is useful to discuss these questions in person.

An examiner interview is also an opportunity for the applicant to provide information to the examiner. For example, with an in-person or video interview, the applicant could display a prototype of the invention or demonstrate the process or method that is sought to be patented. This might assist the examiner in understanding the invention. A demonstration also might prompt a “back-and-forth” discussion that could help the applicant glean important information about “problems” with the application and potential resolution methods. Even if a prototype is not available, having the opportunity to verbally explain the invention can help.

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For more information or if you have an invention that you want to patent, contact the patent lawyers at Revision Legal at 231-714-0100.

The Examiner’s Role and Art Unit Assignment

Patent examiners are organized into art units that specialize in particular technology areas—electrical, mechanical, chemical, biotechnology, and computer-implemented inventions each have dedicated art units. Each art unit develops common bodies of prior art and consistent examination practices within that technology space. Knowing which art unit your application is assigned to, and reviewing recent Office Actions from that unit, provides meaningful intelligence about likely rejections before they arrive.

Examiners apply the Manual of Patent Examining Procedure (MPEP), a comprehensive reference governing every procedural and substantive aspect of examination. Applicants who understand the MPEP sections governing 35 U.S.C. § 102 (novelty) and § 103 (obviousness) are better positioned to write persuasive responses to Office Actions.

Responding to Office Actions: Legal Principles

Most first Office Actions are non-final, giving the applicant a right to respond with arguments and/or amendments. Final Office Actions limit the applicant’s options. When responding, keep these principles in mind:

• Address every rejection on the merits. Failure to address a rejection is treated as abandonment of any argument on that point. Arguments not made during prosecution are waived and cannot be raised in later infringement litigation.
• Distinguish prior art with specificity. Point to specific claim elements absent from each cited reference. Vague arguments that the prior art is “different” are routinely rejected by examiners and the PTAB.
• Consider prosecution history estoppel. Narrowing claims to overcome a rejection creates estoppel that limits the doctrine of equivalents in later infringement proceedings. Narrow only what you must.
• File before the deadline. Applicants have three months from the Office Action mail date to respond as of right; extensions are available for a fee under 37 C.F.R. § 1.136(a) for up to three additional months.

Maximizing the Examiner Interview

The examiner interview is one of the most underutilized tools in patent prosecution. An interview allows your attorney and the examiner to discuss claim interpretation, prior art, and paths to allowance in a conversational setting that written correspondence cannot replicate. Before an interview:

• Identify the specific prior art combination blocking allowance and understand exactly why the examiner finds it dispositive.
• Prepare a visual claim chart mapping independent claim elements against the cited references—examiners respond well to these because they make gaps in the prior art visible at a glance.
• Have at least two proposed claim amendments ready—one narrow and one moderately broader—so you have room to negotiate.
• Review the examiner’s search notes to determine whether they missed prior art that would actually support your position, or whether they relied on references that can be distinguished.

After every interview, file an Interview Summary confirming what was discussed and any agreements reached. MPEP § 713.04 requires examiners to document interviews, but a written applicant confirmation creates an unambiguous prosecution record.

After-Final Practice and Appeals

When a Final Office Action issues and amendments alone cannot achieve allowance, consider the After Final Consideration Pilot 2.0 (AFCP 2.0), which allows examiners to consider after-final amendments that do not broaden the claims. The program often achieves quick allowance without the cost and delay of an RCE.

An appeal to the Patent Trial and Appeal Board (PTAB) under 35 U.S.C. § 134 provides a fresh review of the examiner’s rejections by a panel of administrative patent judges. The appeal brief must address every ground of rejection with specific legal argument and citation to the record. Filing continuation applications concurrently with an appeal preserves claim flexibility regardless of outcome.

Contact Revision Legal

If you have questions about the issues discussed in this article, contact the experienced attorneys at Revision Legal. We handle intellectual property, internet law, and business law matters for clients across the country. Contact us online or call us at 1-855-RL-LEGAL.