Campaign: 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 ...more »

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Campaign: Q3: Interviews

Quasi-Round of Prosecution by Enhanced Interview Procedure

A way to obtain the best of both worlds - a) the granularity of iterative prosecution and b) claim development without sacrificing official "rounds" of prosecution - is to expand the interview process. Currently, the time allotted to examiners for interviews is short (normally one hour including prep time), and the interview practice is very open-ended, but an interview can be enhanced into a quasi-round of prosecution ...more »

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Campaign: Q2: Changes in procedure or regulation

RCEs are a Symptom rather than a Problem

In my view, RCEs are not particularly a problem per se. Rather, RCEs are a symptom of a troubled application-examination complex that typically requires multiple rounds of negotiation before the applicant and examiner agree on the appropriate claim scope. RCEs are particularly highlighted largely because of the count system that has treated RCE filings as new applications. Practicing patent attorneys do not see RCEs ...more »

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Campaign: 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 ...more »

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Campaign: Q6: RCEs after final rejections

Appeal time is too long

I generally favor an RCE over an appeal because I might be able to resolve the case faster with an RCE as opposed to an appeal. If the appeal process were faster, I might favor an appeal, instead.

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Campaign: Q2: Changes in procedure or regulation

Reducing the RCE Backlog Requires PTO Processing Changes

1. Change the Status of an RCE filing from A Continuation New Application and Process an RCE Filing As An Amended Application First, it should be abundantly clear that reclassifying the RCE as a “new” application and diverting emphasis or priority from their examination creates more of a problem that it solves. So, I would first advocate for reclassifying the RCE back to their original and proper status of the ...more »

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Campaign: Q11: Other reasons for filing RCEs

Allow submission of IDS's After Final and After Allowance

A significant number of RCEs are filed as a result of references received in related applications, in foreign and US prosecution. If there were a procedure to allow the filing of an IDS during any phase of prosecution, a significant number of RCEs would be avoided. Especially for larger families of cases, the inability to submit references after a final action or allowance can lead to an infinite cycle of RCEs as references ...more »

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Campaign: Q6: RCEs after final rejections

Allow Examiners to conduct an additional search after final

Between myself and fellow practitioners, I know of too many instances where an Examiner refuses entry of an after final amendment on the grounds that it will require an additional search, only to then allow the case on first action after an RCE. (This happens, by the way, even when the claim amendments after final include nothing more than that which was within the scope of original claims anyway, which is a bit ridiculous). ...more »

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Campaign: Q3: Interviews

Provide Simple Pre-Search Interview Process

Examiners often seem to have only cursory understanding of invention before initial search. Often only until interviewing at second office action do they say "ah ha". Allow for simple pre-search interview---no onerous requirements, no discussion about prior art on the record. Simply present and explain the invention, invite examiner questions and examiner can ask 112 issues regarding the claims before the initial search. ...more »

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Campaign: Q10: Avoiding RCEs

A More Fundamental Shift

In my experience most RCEs are necessitated by the Examiner applying new prior art in a second Office action and making it final. The applicant not having seen the new art then needs to further amend the claims, but the Examiner will not permit the Applicant to do so after final. When I was an Examiner, I was taught to read and understand the specification before scoping out the field of search, and to search the ...more »

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Campaign: Q10: Avoiding RCEs

Have both parties put all their cards on the table

I recently received a first Office Action (OA) for an application and then set up an interview. I emailed the Examiner various portions of the Specification that were disclosed but not claimed that I was considering for amendments to the claims. The Examiner emailed back, indicating he had done another search, and cited different portions of references, for each portion of the Specification that I had sent him. I then ...more »

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