Timing

One way that knowledge of the performance system can be used advantageously by an applicant is by timing interviews and amendments to maximize the chances of allowance.  An Examiner’s performance is critiqued on a quarterly and yearly basis.  The government’s fiscal year begins October 1, which means that September 30 is the last day of each annual performance review period.  Other quarters end at the end of December, March, and June.  These times at the end of fiscal quarters, and particularly at the end of fiscal years, are the most hectic times of the year for Examiners.

If you try to schedule an interview or get an Examiner to act on a case in the last few weeks before the end of a fiscal quarter (and especially before the end of the fiscal year), an Examiner will often be unable to accomodate you.  They will simply be too busy trying to get a few more actions out to meet their goal for the quarter and/or year.

But, if you time your requests for a little before that time, perhaps a month or so before the end of a fiscal year, Examiners are often unusually receptive. At that time, every Examiner is eyeing their deadline and thinking about how they are going to get enough counts to keep their job or hit their next bonus.

One of the easiest ways for the Examiner to pick up another few counts is to allow a few cases.  Allowing a case takes maybe an hour for an Examiner to fill out a few forms and follow the necessary procedures.  It is much easier than writing a new first action on the merits or an Examiner’s Answer.

Therefore, an applicant will often meet with success in close cases when scheduling an interview for about a month before the end of the fiscal year (or the end of a fiscal quarter, if that is not possible) and trying to reach an agreement with the Examiner on an amendment that would result in allowance, with or without an RCE.

Appeals

Another strategy for dealing with Examiners in light of their incentives is to appeal rather liberally.  Appeals, although becoming more common, are still extremely rare.  A lawyer I know at a big firm commented that his firm almost never appeals for fear that an application would be rejected by the Board, preferring to file RCEs and continuation applications as necessary.  This leads to some boldness in the Examining corps, in my opinion.

Filing an appeal has several positive effects.  First, it tells the Examiner that you are not going to file RCEs over and over again no matter what he or she does.  An appeal signals that the RCE gravy train is about to come to an end.  They now know that the case is not going to get disposed unless it is allowed or it is seen by the Board, where the Examiner could potentially be embarassed and reversed.

Second, Examiners do not like appeals.  They do not like holding an appeal conference with their supervisor and, worse, a third party, who review the Examiner’s work closely.  They do not like writing Examiner’s Answers. They do not like being forced after an appeal conference to reopen prosecution and change their rejection without getting a count for it.  And they do not like being reversed by the Board.

Examiners do not expect to be appealed and are often suprised when it happens.  It puts them in another frame of mind, often a frame of mind in which they take the case more seriously and really think about whether there might be something in the application they could allow.

For those reasons, whenever an Examiner is uncooperative and is making what appears to be a clear error, I appeal.

Interviews

Another tool that can help get an application allowed even when an Examiner appears to be stringing an application along for RCEs is the interview.  I am a big believer in interviews.  It is too easy, even when you have good intentions, to just push papers past one another without really figuring out what the other person is saying when all communication is conducted in writing.  When dealing with a “bad” Examiner, not having to explain themselves to you or face you makes it much easier for them to do things that are really not proper.

Speaking with the Examiner gives you a chance to make a human connection and break through the bureaucracy.  Sometimes when I receive a really bad Office Action and call up the Examiner for an explanation (very politely), the Examiner will be embarrassed and apologize and offer to do something to clarify the rejection for the record. Most Examiners are not bad people, they are just humans working within the constraints of the Patent Office.  It is all too easy to fall into the trap of taking shortcuts to maximize the number of counts you get for a day’s work when you never have to see the people hurt by your actions and when you get rewarded with large bonuses for doing this.

Meeting with Examiners is therefore a good way to break through this cycle.  When I was prosecuting patent applications full time, I was on the phone with an Examiner almost every single day.  Often I would speak with several Examiners in one day.  In particularly difficult cases, I will go to the Patent Office and speak to the Examiner in person.  I have found that things get done in interviews.  Interviews are the best way to agree on an amendment (if necessary)  and achieve allowance.  If I can get the Examiner to suggest an amendment, that often seals the deal. Examiners often find it harder to reject their own wording than to reject yours!

It is very difficult for an Examiner to refuse to cooperate to your face, so usually you can get an Examiner to work with you in an interview to find something patentable.  And that is the way it should be.  Patent examination is not supposed to be adversarial.  Patent Examiners are not supposed to search for reasons to reject your application.  Rather, they are supposed to work with you to figure out what is patentable and to allow it.  Fortunately, I still find a lot of Examiners who know this too.  But for those that may be forgetting… the strategies above have been very helpful to me, and I hope they will be helpful for others as well.

Applicants may accompany their representatives to such interviews. An interview is your best opportunity to meet and speak with with the Examiner. If you can make it to the Patent Office in Alexandria, Virginia (just outside of Washington, D.C.), a face-to-face meeting with the Examiner can be very gratifying.  Otherwise, a conference-call interview may be conducted over the telephone.

Interviews are often the best way of reaching an agreement with the Examiner on allowance of an application.  Examiners are generally more cooperative when you get them face-to-face. There are pluses and minuses to an inventor accompanying his or her representative to an interview at the Patent Office. A minus is that inventors are generally unfamiliar with all of the legal rules of patent prosecution, and of the legal import of various words and phrases.  The inventor may well slip up and use certain words that indicate, in the Examiner’s mind, that the application should not be allowed.

On the other hand, the inventor generally knows the invention better than anyone.  Sometimes, the Examiners struggle to understand what an invention is, or how exactly it works.  An inventor may be the best person to explain this, to provide other necessary technical background, or just to give the Examiner a feeling for the real-life applications of the invention.  Examiners like to know if an invention is being used in the real world and does not exist only on paper.

If you would like to meet with the Examiner and understand better what is happening with your examination, it is a good idea to speak with your attorney and see if an interview can be arranged and if you can attend.  By working with your attorney and establishing general guidelines (perhaps, speak mainly when prompted by the attorney) you can be involved in the prosecution process and provide valuable help to your attorney, without jeopardizing your application.

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.