Is it a good idea to point out every time the Examiner makes a mistake in an Office Action? I don't think Applicants do this to be snide. I think some Applicants really are worried that failing to address every incorrect statement in the Office Action somehow damages their case.
I came across a file history in which the Examiner issued a § 103 rejection, and prefaced it with the standard form paragraph from MPEP 706.02. The paragraph starts with "This application currently names joint inventors" and then goes on to say that if any claims are not commonly owned, the Applicant has a duty to let the Examiner know since that opens up more prior art under 103(c)/102(e). Turns out the form paragraph was inappropriate because the application named only a single inventor. The Applicant made this point in the next response, carefully stating for the record that the application was filed with a single inventor, inventorship had not changed, and "Appellant is unaware of any other circumstances leading to the conclusion that there are multiple inventors."
Now, the Applicant was very polite in correcting the record. So the Examiner shouldn't have felt insulted – if he even noticed this paragraph buried after all the other arguments. But still ... is this necessary? What possible harm can come from just letting this slide?
Is it simply that some incorrect statements do need to be addressed? [And I agree that some do.] So that if you address all the errors, you don't need to think about which ones matter?
It's probably good practice to at least note any such errors as succinctly as possible (in this example just stopping after noting there is only one named inventor).
ReplyDeleteOn the other hand, for this type of "patently obvious" error there is little downside of leaving it un-mentioned. After all, the statement is just a reminder to inform the examiner of inventorship on a claim by claim basis and indeed the examiner does have all the inventorship information.
>It's probably good practice to at least note
ReplyDelete>any such errors as succinctly as possible
Meaning *if you do* call out minor errors, do it as succinctly as possible?
>for this type of "patently obvious" error
>there is little downside of leaving it
>un-mentioned
So no hard-and-fast rule "call out every error" -- instead, go on a case by case basis, evaluating the pro's and con's?
I just wanted to say that I completely agree. Pointing out each and every error is usually a mistake. Some thoughts:
ReplyDelete1. Patent prosecution is generally pretty forgiving to applicants. There are few mistakes that will permanently bar you from making an argument or winning an issue. Some exceptions would be admitting that something is prior art and failing to traverse an assertion of common knowledge (and, even then, I'm not sure how binding the failure to traverse would be on appeal). Of course, in litigation, things are different and anything you say will be used against you viciously.
2. I think that practitioners could generally benefit from more marketing and sales training. Practitioners are, essentially, salesman trying to sell the examiner on allowing the app. In that regard, they can benefit a lot from reading books like Influence: The Psychology of Persuasion>Influence: The Psychology of Persuasion.
3. It's generally pointless to traverse an Examiner's error if he can correct it. I see this a lot: practitioners traverse the rejection as stated in the Office Action and not the rejection as ideally made in view of the references (e.g. as if the practitioner were the examiner writing the rejection). Examiners famously and routinely retool, revise, and embellish their rejections in subsequent final office actions and advisory actions. So, if you're pointing out an error that the examiner can and will correct, you're just wasting your and the client's money. The only time you would do that is if you think the Examiner is likely to miss the better statement of rejection or feel intimidated by your arguments - but then you need to consider whether, if you succeed, the patent will even be valid.
4. There's a balance to be struck between A. brevity and clarity and B. formalism, completeness, and the sheer intimidation factor. I generally prefer A. But I think most practitioners generally prefer B. I think most practitioners are wrong to do that. For example, the B style can result in the Examiner not understanding your arguments (many or most Examiners pay little attention to the remarks and just focus on the claim amendments).
But even I recognize that sheer volume and sophistication of argument can intimidate an examiner. I generally avoid using footnotes in legal writing (e.g. before a judge), but sometimes if you write a huge Remarks section full of MPEP, Board, and CAFC cites and footnotes, the Examiner will feel like he cannot compete.
In general, I prefer prosecution to be done in the style of brevity and clarity and friendliness. I want the bread and butter of my prosecution to be done based on a reasonable back and forth with the examiner on a friendly basis with a minimal written record. But, as often happens, the examiner may get stubborn and dig in his/her heels, and then I'll quickly switch over to the complete/intimidating style to let him/her know how ready for appeal I am.
5. A great example of a good practitioner who is not afraid to point out virtually every one of the examiner's error (and file lots of petitions and appeals) is David Boundy, who lectures for PLI, and is also the author of the upcoming Patent Prosecution book on Oxford University Press. You can search "David E. Boundy" on Google Patents to find patents and apps that he prosecuted, and then look at their file wrappers in Public Pair to see some of the petitions and requests that he's filed. He routinely argues that there is no prima facie case of obviousness because the Office Action doesn't discuss likelihood of success, and that the Office Action is illegal and void because it fails to follow internal PTO procedures. Great stuff.
>Patent prosecution is generally pretty
ReplyDelete>forgiving to applicants....Of course, in
>litigation, things are different
But litigation does expose prosecution conduct to scrutiny, right? So I think a prosecutor's job is more than getting claims allowed, it's getting claims allowed that will stand up to scrutiny later.
I think litigation drives much of prosecution behavior. Some behavior which is clearly counterproductive in the short term -- pointing out errors, writing long arguments with cites, etc. -- is actually aimed at the long term.
>I see this a lot: practitioners traverse the
>rejection as stated in the Office Action and
>not the rejection as ideally made in view of
>the references
Are you thinking of something like a claim that recites widget, and the rejection says widget is in para. X, and it's not -- but the widget is in fact in para. y?
I agree that in such a case prosecution will advance more quickly if you deal with the actual teachings of the reference rather than just the Examiner's narrow interpretation.
OTOH, different clients have different strategies and goals. Some clients want the Examiner to actually make his case on the record, and don't like arguments that go beyond what the Examiner actually alleged.
>balance to be struck between A. brevity and
>clarity and B. formalism, completeness, and
>the sheer intimidation factor.
I'll gladly do away with formalism, and I don't practice intimidation much. I do struggle a lot with the tension between clarity and completeness. It's often hard to write an argument that is clear and yet covers everything you want to cover.
Hi,
ReplyDeleteI second Anonymous' observation, that there's no point in making a procedural argument if you see the examiner's point and it's right.
However, when it sure looks like the examiner is wrong, and the most likely explanation for the examiner's error is that the examiner simply didn't think about the issue, then, YES, I raise the procedural issue and force the examiner to explain the position (without much argument on the substantive issue). I hope that this will force the examiner to think and allow the case. At worst, the examiner articulates a point that I hadn't seen, and now I know what to do. Or the examiner now gives an explanation that exposes the error, and it's easy to teach the examiner what the examiner needs to know to self-correct, or appeal. All this, of course, depends on the examiner answering all material traversed -- sometimes a very big "if."
I also second the point that it's always important to pick your goals and your means to the goal. It's not cost effective to raise every issue, and the good issues get diluted by the bad. However, in cases where it has become clear that the examiner is just throwing shit in the air for the sake of delay, and I want to commit the examiner to making as many errors as possible so that an appeal brief can calmly point out how totally outrageous the examiner's position is, then yes, I do what I can to create a "target rich environment."
"I think litigation drives much of prosecution behavior. Some behavior which is clearly counterproductive in the short term -- pointing out errors, writing long arguments with cites, etc. -- is actually aimed at the long term."
ReplyDeleteKaren, I think your belief that any behavior which corrects or criticizes the work of an examiner is necessarily "clearly counterproductive in the short term" is unfounded. Examiners can handle having their errors pointed out, especially if it is done respectfully. I've never heard of correcting a minor error hurting an applicant's chances of allowance. To think that seems absurd to me. Put me in the "let no error co unaddressed" camp.
>your belief that any behavior which corrects
ReplyDelete>or criticizes the work of an examiner is >necessarily "clearly counterproductive in the
>short term" is unfounded.
Well, I don't think I said "any correction or criticism" -- but I did overstate and overgeneralize.
What I really meant was that nitpicking *every little* error -- ones like in my original post -- is counterproductive during prosecution. I got lazy in my writing and didn't spell that out.
>Put me in the "let no error go unaddressed"
>camp.
OK. Then you and I disagree. I think I would leave the type of error discussed in the original post unaddressed.
>I've never heard of correcting a minor error
>hurting an applicant's chances of allowance.
Surely *all* of this discussion is just anecdotal, right? How would you hear of such a thing? Who really knows if any of this matters?
>raise the procedural issue and force the
ReplyDelete>examiner to explain the position ...
>I hope that this will force the examiner to
>think and allow the case. At worst, the
>examiner articulates a point that I hadn't
>seen, and now I know what to do
This comports with my basic prosecution philosophy: get the Examiner to put his position/thinking/rationale on the record so that I have something concrete to argue against.
I probably apply this more to substantive issues -- e.g., exactly *what* feature in the reference reads on my claimed element -- than to procedural ones.
Though I suppose it depends on what we mean by "procedural issues". Most issues that I would consider "procedural" require a petition. I would fight procedural issues more often if I could do so through appeal -- the separate petition process seems like too much of a hassle.
What I mean is, I've never heard a practitioner complain that the hurt feelings of a rancorously adversarial examiner was the only thing standing between the application and its allowance, simply because of having been peeved by practitioner's nitpicking in the arguments. It seems silly.
ReplyDeleteIt only takes a second to address an error, but it could take years to fix an error that was left unaddressed. Your particular example, here, I agree, is not very substantial. However, let's say the examiner used a form paragraph that didn't apply to the particulars of the scenario, and which cited to an inapplicable rule or statute. Should I let that slide, just because it was an understandably sloppy use of form paragraphs and I don't want to get on the examiner's "bad side"? Heck, no. I'm going to point out that the examiner used an inapplicable form paragraph. Put it on the record.
>I've never heard a practitioner complain that
ReplyDelete>the hurt feelings of a rancorously
>adversarial examiner
I don't think we can infer too much from that. Examiners might well complain about this every day and we'd simply never know.
I'll freely admit I don't *know* what Examiners think about this. I have a rough sense of how Examiners react to various things from having practiced with ex-Examiners and from having conversed with those-who-seem-to-be-Examiners on blogs.
But that's it.
I am not afraid to take actions which could hypothetically annoy an Examiner. It just seems that you and I draw the line in a different place.
>It only takes a second to address an error,
>but it could take years to fix an error that
>was left unaddressed.
I can see two reasons for the bright line rule "address every error". One, the consequence of failing to address an error could be large. Following the "always and every" rule minimizes your risk of a possibly large downside. Two, it takes effort to distinguish between errors-I-should-care-about and errors-I-can-ignore. Following the "always and every" rule saves effort = time/money.
>I'm going to point out that the examiner
>used an inapplicable form paragraph.
>Put it on the record.
As a CYA? The idea being "I can't see what harm can come from not pointing out the Examiner's error, but I may have missed something, so I better take action"?
Or as a reasoned strategy to make the Examiner look bad? I've definitely read Appeal Briefs that highlight what the Applicants view as shoddy prosecution by the Examiner.
re August 9, 2010 2:35 PM Karen G. Hazzah
ReplyDeleteKaren's got it exactly right - use the procedural tools (Manual of Patent Examining PROCEDURE, Administrative PROCEDURE Act, 37 CFR 1.104, which the PTO defends in court as within its "procedural" rule making authority) to force the examiner to state the substantive position.
Ah, you've fallen into the vocabulary trap. "Substantive" and "procedural" are well defined in the administrative law. The Patent Office coins its own Orwellian double speak, and redefines terms of art -- or rather, uses the terms "substantive" and "procedural" to mean anything that a particular PTO employee wants it to mean on any given day. The obligation to discuss the prima facie elements of substantive issues is "procedural" under the definition that applies in any other legal setting - the examiner has a procedural obligation to write something on paper on each element, e.g., of obviousness under one of the eight "recipes" of MPEP 2143. (Think Fed.R.Civ.P. 12(b)(6) motion -- if you don't plead each element of a prima facie case, you get dismissed on procedural grounds, with no substantive res judicata.)
>use the procedural tools (Manual of Patent
ReplyDelete>Examining PROCEDURE, Administrative
>PROCEDURE Act, 37 CFR 1.104... to force the
>examiner to state the substantive position.
Oh, I definitely do my best to get the Exmainer's substantive position on record. But I don't see the MPEP as a tool for forcing an Examiner to do anything. Citing to the APA or to In re Zurko doesn't seem to work either. The only way to force an Examiner to do anything is to take the issue away from him by filing an appeal or a petition.
>the examiner has a procedural obligation to
>write something on paper for each element
Your categorization of this as a procedural obligation makes sense to me.
David, from a practical standpoint, is a failure of this procedural obligation a petitionable matter or an appealable matter?
That is, if an Examiner did not lay out a prima facie case, and I really wanted to fight about it, how would I do so?
">the examiner has a procedural obligation to
ReplyDelete>write something on paper for each element
"
HAHAHAHAHAHHAHAHAHAHAHA
"
That is, if an Examiner did not lay out a prima facie case, and I really wanted to fight about it, how would I do so? "
It's called begging, you can do it at 4 different levels. The examiner. The SPE. The director of the TC. And finally Davy K. Catch him on his way to the metro for quickest response time.