Q2: Changes in procedure or regulation

Examiner suggestions could make communications true negotiations

In a true negotiation, both parties offer suggestions for an agreement. But in many patent prosecutions, the suggestions for agreed-upon claims come only from the applicants. The Examiner's only role in many cases is to rule on the applicant's suggestions, so these cases are not the subject of true negotiations. I personally welcome suggestions from Examiners for claim language/ claim scope, even when those suggestions are not acceptable to my clients, but suggestions are rare. In my experience, patent prosecution is often not a true negotiation with offers and counter-offers, but is instead a seqence of offer - rejection - different offer - rejection - yet another offer - rejection, etc. For applicants, prosecution often feels more like a guessing game than a negotiation. One reason interviews can help is that Examiners are a bit more willing to offer suggestions. So why not encourage (or even require) Examiners to also offer suggestions for claim scope within office actions? That would often reduce the need for RCEs by permitting a true negotiation between applicants and Examiners.



11 votes
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Idea No. 11