Patent examiners are federal employees tasked with reviewing patent applications. They determine if a patent is valid and if the new idea is viable to launch. No new technology comes to proper fruition without a patent.
The following are insights about these professionals, giving you tips for understanding and interacting with the United States Patent and Trademark Office.
Build professional relationships
Collaborate alongside examiners with the understanding this could be the beginning of a highly beneficial partnership. There is always the chance future patent requests may get docketed to the same examiner. Knowing an examiner’s preferences for a preferred claim structure may help tailor office action responses and increase the chance of passing through to allowance.
Keep a professional demeanor as well. Many patent applicants can be overzealous and unprofessional about defending their dreams. Crossing the line between courteousness and respect will not help your case.
Not all examiners are legal experts
Many examiners have legal degrees before they begin their career as an examiner, while others acquire them on the job. That said, the agency requires no legal background to be an examiner. They often have diverse experiential and educational backgrounds. The staffers can have B.A.s or PhDs. Many have little to no industry experience prior to starting.
With this in mind, avoid arguments with patent examiners about their legal basis for rejections. Instead, highlight the technology behind the claim.
Give examiners the chance to see your vision
Use interviews to help examiners see and understand the invention. Bring a prototype or other visual aid to enhance understanding of the patentable features. Upon reviewing an application, an examiner will only see embodiments, legalese, and figures. This detached assessment could allow them to lose sight of the big picture, especially for innovation they may not be able to put into context.
Choose your battles carefully
Many applicants argue for the sake of argument. Strive to limit disagreements to reduce the time spent on issues that do not support your goal. If a rejection is based on a design choice instead of the prior art, avoid asking the examiner to find a reference. Show patience and flexibility. Accept the examiner could be right and take a reasonable approach for resolution. This strategy enhances your credibility.
Tell a story
Business considerations and the inventor’s intention are not necessarily in the examiner’s purview, so give them a clear picture of the invention’s purpose and provide a narrative of its landscape. Show your source of inspiration and how the patent improves conditions or resolves significant matters in an industry or people’s lives.
Examiners are in the business of streamlining the assessment, determining allowance or abandonment, and avoiding repeat requests and continued examinations. Putting the patent in context can influence progress, putting the claim in perspective.
Track the calendar
Time impacts the patent office’s receptive ability. Exact dates can fluctuate but are loosely bi-weekly. The end of a quarter, especially the fourth quarter, is a busy period for examiners. Take this into account when managing your own internal timeline.