Any seasoned patent practitioner has undoubtedly been in this situation before: a non-final rejection comes to your inbox, and while reviewing, you're beside yourself how the Examiner arrived at § 101, § 102, § 103, and § 112 rejections of your pristine, unassailably allowable application. Before tearing your hair out in frustration, and hopefully before this happens again, the USPTO transparently provides insights into how an Examiner may be getting to their reasoning for rejecting your application. Prior to diving into the Manual of Patent Examining Procedure ("M.P.E.P."), the cited case law, or even the cited art relied on by the Examiner in the rejection, take a minute and make your way to the USPTO Examiner Guidance and Training Materials.
Patent prosecution in the U.S. is not a rote, static process where an applicant follows a particular set of steps in drafting their application that all but guarantees the application will be allowed with minimal resistance from the USPTO. Substantive examination means just that, substantive, not merely an administrative review. Every set of claims is uniquely drafted, and every specification carries different risks of potential rejection for lacking description or even baseline patentability. And as a patent practitioner, opportunities for efficiency in responding to rejections exist if the applicant understands the foci of the training every Examiner receives. Further, many mistakes can be altogether avoided during drafting and prosecution by understanding how the Examiner will approach your application when it first comes across their desk.
The training materials promulgated by the USPTO for use by all Examiners includes overviews of how to understand case law as cited in the M.P.E.P., restriction practice, anticipation and obviousness rejections, patentability, and the various § 112 grounds for rejection, among other relevant topics. And while every Examiner will undoubtedly use their judgment and additional insights learned while on the job, it remains true that understanding the baseline training Examiners receive will empower an applicant to avoid unnecessary pitfalls that can make prosecution lengthier and more costly.
Patent applicants need to occasionally be reminded that an Examiner is not an adversary in this process. Instead, their job is to review your application to maintain the integrity of the patent protections afforded by the Constitution. With this in mind, it is advisable to any patent applicant that the most effective approach to any Examiner interaction is to understand where the Examiner is coming from, rather than to flatly contend they are somehow mistaken in their interpretation, even if that is the case sometimes.
In the coming weeks, Finnegan's Prosecution First Blog will dive into several of the more illuminating insights worth remembering from the USPTO's training materials for the next time you're knee-deep in drafting or prosecuting to try and make you and your Examiner's interactions a bit cleaner and more streamlined.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
