Unfortunately, turnover at the Patent Office is very high and the quality of Examiners can vary widely. What happens when an Examiner is not applying the correct law or misunderstands a key aspect of your invention? The first step is to try to work it out with the Examiner. Many Examiners are friendly and intelligent. I find that a telephone call to the Examiner is often enough to clear things up. For more complex issues, or when you are dealing with an Assistant Examiner who cannot make decisions without the approval of his or her Primary Examiner or Supervisory Patent Examiner, I often conduct in-person interviews at the Patent Office headquarters in Alexandria, VA .
Many times, even when facing a difficult rejection, I can find a way to tweak the wording of the patent application to satisfy the Examiner and achieve allowance of a strong patent. But sometimes, it just isn’t possible to reach an agreement with the Examiner. Sometimes you simply reach an impasse with the Examiner over a particular interpretation of the wording of the patent application or of the relevant law. When you get “stuck” on an important issue where you have a disagreement with the Examiner and cannot get around it, it may be time to appeal.
Other times, something else is going on. Patent examiners have gotten in trouble in the last few years for allowing too many patents, and especially for allowing too many so-called “junk patents” that some feel do not deserve patent protection and generate costly litigation. Therefore, there has been a recent emphasis in the Patent Office on “patent quality.”
In reality, the emphasis is often on rejecting a patent application using any available argument. Patent Examiners can get in serious trouble if they allow too many patents, but almost never get in trouble for issuing improper rejections. The incentive to reject applications is obvious. The result can be ever-changing rejections that are withdrawn or re-imposed in each Office Action. This is a clue that the Examiner is looking for a way, any way to reject your application. This may be the Examiner’s own initiative, or may be an instruction from his or her Primary Examiner or Supervisory Patent Examiner that they do not feel the application should be allowed.
Usually, when an Examiner is willing to acknowledge arguments of the Applicant’s counsel and modify his or her rejections, this is a good thing and indicates that the Examiner is reasonable. But when an ever-changing array of different rejections of seemingly little merit are imposed over and over, it is time to stop working with the Examiner and go over his or her head to the Board of Appeals.
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