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IP, Patent

Intelligence Is (Not) A Requirement – “Good” vs “Bad” Patent Prosecution

Over at my friend Mark’s TacticalIP blog, I recently commented that every patent application is deserving of at least an informal phone call with the Examiner, if not an interview.  I can’t tell you how many patent file histories I’ve read over the years that went through multiple RCE’s (translation for patent owners: spending your money to buy another chance to amend the application) or even went to an appeal (translation for patent owners: spending a whole lot more of your money to prove the Examiner is wrong) without any indication that the patent attorney even attempted to interview the Examiner.  Applications are rejected for a variety of reasons, but even a simple phone call can help establish a friendly repoire with an Examiner, or even get a reaction to a potential argument or claim amendment.  Everyone wants to keep costs down, but when filing, pursuing and ultimately maintaining patents can easily exceed $10,000, would you really admit to your client, in writing, that the invention still isn’t worth an hour out of your day to get the Examiner on the phone?  That said, there’s a right and a wrong way to do just about everything. Thanks to Karen Hazzah who blogs at All Things Pros., we have a great example of the wrong way:

[Applicant’s representative] then noted that I would receive two counts upon filing of the RCE. The Examiner acknowledged this and noted that examiners are not in the habit of trading counts for guaranteeing that certain prior art references would not be applied to the claims. [Applicant’s representative] then indicated that he would go to appeal, noting that he had a 60% chance of winning the appeal. The Examiner stated that he has every right to appeal, and could proceed as he wished.

Of course, not being satisfied to leave well enough alone, the attorney shot back in his own interview summary:

The tone of the third-to-last sentence of the Examiner’s Interview Summary (see Exhibit A) falsely accuses Applicant’s attorney of bribery. Applicants submit such a  statement is not only defamatory, but cannot be supported by the communication between the Examiner and Applicant’s attorney of record. Further, the Examiner’s statement that Applicants’ required a guarantee with respect to the application a 35 USC 103 rejection in view of as-yet-to-be-performed search not only absurd, but patently false. Moreover, the Examiner has made these and other  inflammatory and defamatory remarks a matter of permanent record. This is outrageous and should not be permitted to stand.

via Prosecution gone wrong | All Things Pros.

A number of references (everything from Hamlet to Barbara Streisand) come to mind, but regardless of whether the attorney was trying actively to bribe the Examiner, this sort of comment (if it was indeed made during the interview) is entirely unhelpful.  Patent Examiners are rewarded (in terms of bonuses, promotions and step increases) based on their performance, which is measured by “counts” (completion of specific events during the patenting process).  Although the amount of credit given to certain events under certain circumstances has changed over the years (see this older PatentlyO post for an explanation of recent changes), the point here is that by filing the RCE, the Examiner’s record would have been updated to reflect this additional productivity.

Of course, the Patent Office doesn’t exist to reward Examiners with counts, and every Examiner knows that his or her livelihood depends on completing an examination and disposing of an application … trust me, they really don’t need to be reminded … by doing this, the attorney was basically suggesting either that the Examiner was unaware of how the count system works (an attack on his or her intelligence) or that the Examiner would decide the merits of the application based solely on the count system (an attack on his or her integrity).  Either way, the Examiner was understandably insulted by the comment (so much so that it ended up in the written record).

So, as a caveat to my “always call the Examiner” rule, if you can’t get on the phone without insulting the government official charged with the disposal of your client’s patent application, then please, by all means, have someone else in your office make the call …

 

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Discussion

3 thoughts on “Intelligence Is (Not) A Requirement – “Good” vs “Bad” Patent Prosecution

  1. Ha, ha! I swear I must have worked with that patent attorney.

    But seriously–I went through years of training–at the most sophisticated level at a prestigious law firm–until someone told me to call the examiner to discuss a case instead of filing another paper. And, when I did, I didn’t know how to handle the conversation. I chalk this up to the fact that my mentors were case law and prosecution experts, but had very few social skills. (Just ask my husband how much he hated our law firm get togethers!) Many lawyers effectively hide behind their pens because that is what they perceive that their clients are paying them for, and, frankly, it is more comfortable than putting yourself on the line in person. So, working things out in conversation was the last thing they would do willingly. Add this to the fact that many examiners also find it more appropriate to make their views known on the written record, and one can see why the obvious step of picking up the phone is often avoided like the plague–by both sides.

    The big loser in this is ALWAYS the client. Every word written (or copied as boilerplate) in a response to the Patent Office costs money. And, as shown by the humorous excerpt above, the record gets muddied and contentious, which further increase costs.

    What’s interesting is that we tell our clients to avoid putting things into writing that can be misconstrued, but this the first thing that most patent attorneys do. Sadly, I don’t see things changing in this regard unless clients start directing the show more proactively, such as by saying they will not pay for a response unless the bill also includes a record of a telephone interview.

    Posted by Jackie Hutter | December 29, 2010, 8:47 am
    • Jackie,
      Thanks for the additional insight, as always. I hadn’t even considered the relatively anti-social nature of patent lawyers, but you’re absolutely right. (If you doubt me, go to an LES meeting and compare it to your last experience at a patent CLE).

      I also have a theory that some of the “head scratcher” rejections are motivated by the application abandonment rate … that is, the Examiner issues a mostly unwarranted rejection on the off chance that the applicant won’t pony up the money for a response … in these cases, a quick phone call may pave the way to getting a second non-final action, in which case the value per billable hour to the client is higher than any written response …

      Posted by Patrick | December 29, 2010, 9:00 am

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