Q2: Changes in procedure or regulation

Allow a second Response before Final OA

One response before Final OA is simply too few.

 

Typical scenario: assume attorney does thorough and conscientious job preparing the patent application.

 

When the attorney receives the first OA, usually the rejection makes no sense. The cited art doesn't seem to say what the examiner says it says, or if it does say that, the art's teaching seems to be unrelated to the invention.

 

Attorney files first response doing her best to explain this.

 

Then comes Final OA, in which it finally becomes clear that the rejection is based on an outlandish BRI that the attorney never considered when writing the application (because it extends way outside the actual field of the invention).

 

Now an RCE is required to change the claim term to something satisfactory to the examiner.

 

An opportunity for a second response before Final would sometimes help.

 

Alternatively, if after the first OA the attorney is able to detect the unreasonable BRI, then the first response can try changing the claim term. But it's still uncertain whether the new term will appease the examiner, so a second response opportunity before Final still could help.

 

And note that we still have not reached the substantive patentability issues.

 

A response to the above might be that the attorney should have set up an examiner interview after the first OA. But the likelihood that all issues can be resolved in one interview, including both the BRI and substantive issues, is practically nil. This is especially true if a claim term needs to be changed to overcome the BRI issues, because the Examiner then needs to do a new search. And as this is often the first search in which the examiner really has any understanding of the claimed invention, it usually produces another rejection, which is now final.

 

So one response opportunity before Final OA is simply too few.

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Idea No. 27