Patenting Strategies: Before You Appeal the Examiner’s Final Rejection . . .

Patent Examiner Collaboration
Try Collaborating with the Examiner on Possibly Allowable Subject Matter (Image:

Once a USPTO examiner issues a “final” rejection against your patent application, your options become limited. They include 1) filing a Notice of Appeal to the Board of Patent Appeals & Interferences, 2) filing a Request for Continued Examination (“RCE”), 3) abandoning the application (possibly in favor of a continuation application), and 4) making amendments that place the application in condition for allowance.

It can sometimes (or often) be the case that none of these options is attractive (or even very palatable) to your client. With respect to option 1, the appeal process can be expensive and lengthy. Some clients simply do not want to invest the money or time in an appeal, even if their position is strong on the merits.  Option 2, filing an RCE, is only attractive if you can make further claim amendments that will not compromise the commercial value of the claims and which will improve the likelihood of getting an allowance.

Options 3 and 4 are often not options at all. If you abandon the application, the client gets nothing. Filing a continuation application, while possible, may be pointless. Often, the continuation application will be assigned to the same examiner as the parent application. In that case you will likely be confronted with the same rejections and dilemma. With respect to option 4, many times there are no apparent amendments that will place the application in condition for allowance.

Here’s one strategy that I have found helpful on several occasions: calling the examiner and asking if he has been able (or would be willing to try) to identify any subject matter in the application which he believes may be allowable. Essentially, I ask the examiner to cooperatively brainstorm with me based on his knowledge of the prior art. This is an examiner interview, but instead of arguing the current rejections, I am work with the examiner to  identify features in the specification that may lead to allowable claims.

I was very surprised to see how receptive the examiners are to this. In one case that involved a design patent, I had run into a wall on a double patenting rejection over one of the client’s earlier patents. When I tried to narrow the claim, the Examiner asserted a new matter rejection. I thought that perhaps there was nothing I could do. However, the Examiner made a suggestion for broadening the claim, which ultimately got my client a better and broader patent than I anticipated. In other cases, the examiners identified narrowing amendments that still provided commercially valuable claims. Needless to say, the clients were pleased.

This strategy often results in the filing of an RCE (option 2) to implement the suggestions the examiner makes. Of course, there is no guarantee that the examiner will not conduct another search and conclude that the suggested subject matter is unpatentable. Also, his suggestions may deprive the claims of any commercial value, and some examiners will be better and more receptive to providing this level of assistance than others. However, I was very pleasantly surprised at how willing several examiners were to spend time reviewing the specification to look for potentially allowable subject matter. It can really save your client time and money and avoid the frustration of the appeal process.

For patent attorneys who have spent a good part of their career in litigation (like me), it may not be intuitive to try this approach. When I first transitioned into patent prosecution, I was very much in an adversarial litigation mode in dealing with examiners. I have since learned that this is not necessarily productive or in the client’s best interests. There will be times when you are simply at an impasse with an examiner and have to seek relief via an appeal. However, do not be too quick to create an adversarial relationship. Trying to foster a collaborative relationship may produce better results.

One Thought to “Patenting Strategies: Before You Appeal the Examiner’s Final Rejection . . .”

  1. Steve: I agree that calling Examiners, and asking them to consider allowable subject matter, is a very valid approach. However, you may wish to file an RCE or a continuation (or divisional) for reasons other than those you suggest.

    You suggested that an RCE is only attractive if you can make further claim amendments that will not compromise the commercial value of the claims. You might also file an RCE to present additional arguments that the Examiner had not considered, to present additional data, to file a Declaration, to add additional claims to further distinguish over the art (which you cannot do after final without cancelling an equal number of other claims without filing an RCE), and the like, and not necessarily to file narrowing amendments. By filing an RCE, the Examiner has to consider new evidence/arguments, and cannot say that they create new issues.

    You might also wish to file a continuation/divisional for any number of reasons. For example, continuation applications seem to be considered these days before RCEs, so filing a continuation might expedite prosecution. The continuation also allows you to focus on other aspect of the invention while still working to gain allowance of the claims in the instant application. There might be another embodiment of the invention that is commercially relevant, and which more clearly distinguishes over the art, that you can present in a continuation. For example, claims to a compound might have issues vis a vis the prior art, but claims to a method may be free of the art, and are best pursued in a continuation or divisional (depending on whether or not there was a restriction requirement), rather than in an RCE.

    Perhaps the best part of your article is your recognition that we should work with Examiners, and not be adversarial to them. I have worked with many attorneys who automatically assume the Examiner is wrong, and push for claims that would fail if litigated. I believe our role is to ascertain when the Examiner is wrong, and if so, to argue, or right, and if so, to make appropriate amendments, so that the patent is in the best possible form for future litigation. We cannot forget the human element. Examiners are told every day that they are wrong, and it doesn’t hurt to be respectful (something we’re supposed to do in any case)when we tell them they’re wrong. Examiners have a lot of latitude, and you’ll get farther, faster, if you treat them with the respect they deserve.

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