Sunday, December 26, 2010

Prosecution gone wrong

Examiner Interviews are widely viewed as a great way of making forward progress in an application. This was certainly not what happened in one file history that I ran across, where prosecution seemed to go off the rails as a result of an Examiner Interview. Or, more accurately, as a result of the Examiner's Interview Summary, which (according to the Applicant's representative) accused the Applicant's representative of bribing the Examiner!

Here are the juicy details. After a Final Office Action which included prior art rejections, an interview was conducted to discuss claim amendments to overcome the outstanding rejections. The Examiner's Interview Summary said:
The Examiner indicated that such an amendment would define over Hartigan et al as a 35 USC 102 reference, but indicated that the amendment would be subject to further search and/or consideration. [Applicant's representative] then asked if the Examiner would guarantee that if he filed an RCE with said amendment, the Hartigan et al reference would not be applied to the claims in a 35 USC 103 rejection and the Silvis et al and Benett et al references also would not be applied under 35 USC 102 or 35 USC 103. The Examiner stated that he could in no way guarantee that such would happen ... noting that the claims would be subject to further consideration and/or search. [Applicant's representative] then noted that I would receive two counts upon filing of the RCE. The Examiner acknowledged this and noted that examiners are not in the habit of trading counts for guaranteeing that certain prior art references would not be applied to the claims. [Applicant's representative] then indicated that he would go to appeal, noting that he had a 60% chance of winning the appeal. The Examiner stated that he has every right to appeal, and could proceed as he wished.

The Applicant filed a Notice of Appeal and an Appeal Brief. The Applicant simultaneously filed an After Final Response which included an Interview Summary.

In the Interview Summary, the Applicant's representative took offense at the Examiner's use of "trading counts" in the Examiner's Interview Summary. According to the Applicant's representative, the Examiner had accused the practitioner of bribery, an allegation which amounted to defamation. The patent practitioner then asked the PTO to reprimand the Examiner and reassign the application to another Examiner.

Here's the Applicant's Interview Summary:

     It is Applicant's belief that the Examiner has willfully fabricated false information in the Interview Summary dated 10/24/06. It is also Applicant's belief that the Examiner has deliberately attempted to keep communications out of the filewrapper.
     The tone of the third-to-last sentence of the Examiner's Interview Summary (see Exhibit A) falsely accuses Applicant's attorney of bribery. Applicants submit such a  statement is not only defamatory, but cannot be supported by the communication between the Examiner and Applicant's attorney of record. Further, the Examiner's statement that Applicants' required a guarantee with respect to the application a 35 USC 103 rejection in view of as-yet-to-be-performed search not only absurd, but patently false. Moreover, the Examiner has made these and other  inflammatory and defamatory remarks a matter of permanent record. This is outrageous and should not be permitted to stand.
     Applicants respectfully request that the Examiner's Interview Summary dated 10/02/2006 be stricken and removed from the record of prosecution in this case.
     Due to the substantial differences in the Examiner's and Applicants' accounts of the Interview and the fact that the Examiner did not comment or question the accuracy of Applicants' summary the Examiner's Interview Summary has failed to comply with at least MPEP 713.04.
     It is clear that at best there has been a serious breakdown in communication between the Examiner and Applicants' attorney of record, and at worst there has been retaliatory action's taken by the Examiner.
     Regardless, it is Applicants' belief that these differences will likely prevent future communications between the Examiner and Applicants' attorney of record from being open and productive. Therefore, Applicants respectfully request reassignment of the instant application to another Examiner. Moreover, Applicants consider these matters to constitute a serious breach of [the Examiner's] professional responsibility and respectfully request that this case be referred to [the Art Director] with the recommendation that [the Examiner] be formally sanctioned for his unprofessional conduct.
     In the event of reassignment of the instant application to another Examiner, Applicants would be willing to file an RCE and withdraw their appeal in favor of permitting the newly assigned Examiner a full and fair opportunity to review the case as well as to conduct an updated search.

Are you wondering how this all came out? The application went on to appeal, where the Board affirmed the prior art rejections. The Applicant's request for reassignment to a new Examiner was ignored — as it should have been. Procedurally, this sort of request is handled via a Petition, not an After Final response.

I wonder what the client thought about all this. The client was a large corporation, presumably with access to other outside counsel. Would it make sense for the client to switch to another attorney for this particular case? Not to punish the attorney. Purely as a practical matter, because the relationship between the attorney and the Examiner had deteriorated so badly. Or is the relationship with Examiner irrelevant for this particular application because it was on appeal?


  1. And this is why I am happy I live in a 1-party consent state.
    ALL of my Examiner Interviews are recorded. It is impolite that I don't tell them, but not illegal where I live.
    Exactly what Petition would you have used?
    I had a case like this which started with my boss and the Examiner yelling at each other.
    Needless to say this lead to what I called "Examination in Bad Faith", via what was clearly a series of dishonest Catch-22 rejections. Changing the attorney made no difference.
    I wanted to appeal the Catch-22 rejections and make obvious the Examiner's behavior. However, my new boss gave me the "might makes right" speech and decided to abandon the case.
    As I said, since then I have recorded every call with the Examiners.

  2. Does it really matter if you record the call? All the examiner has to do is say "wooops, my bad"...

  3. >Changing the attorney made no difference.

    Interesting. I would think that Examiners associate applications with attorneys, not with assignees or inventors. Then if a problem arose with the attorney-Examiner relationship, I'd think switching attorneys would help. But this is speculation on my part.

  4. >Does it really matter if you record the call?

    Well, it's evidence of what really happened, right? Would be good to have evidence, rather than just your side of what happened, if you decide to take this matter up with the Examiner's boss, or the guy above the boss, etc.

  5. bribery versus extortion -- two sides of the same coin ... just a little quid pro quo, which (unfortunately) has being going on at the USPTO for a very long time.

    The interesting question is why would the examiner's interview identify certain references. Were they of record? Were they relied upon in a rejection. Why were they part of the discussion? Regardless, if the examiner had already considered a reference, the examiner should be able to tell an applicant whether or not a proposed amendment would overcome a 102 rejection. Also, it is (almost always) unreasonable to ask for that examiner not rely upon a piece of art with a 103 rejection.

    By writing what this examiner wrote in the Interview Summary, this examiner has shown himself/herself to be none too bright. It is a small world, and it doesn't pay to make enemies.

    Regardless, both this examiner and attorney need to be more careful and more professional.

  6. >why would the examiner's interview identify
    >certain references.

    Looks like I was too zealous in my editing of the Examiner's Interview Summary. I've revised the post to include more of the text.

    You can now see that the reference under discussion was used in a 102 rejection. And that the Examiner agreed the amendment would distinguish over the reference.

    The anticipation rejection was the only prior art rejection. Perhaps the other two refs mentioned were "of record but not relied upon".

    >(almost always) unreasonable to ask that
    >examiner not rely upon a piece of art
    >with a 103 rejection.

    Agreed. If Ref A teaches X and applicant adds Y to distinguish, then I'd be surprised if the next rejection was *not* a 103 with Ref A teaching X and Ref B teaching Y.

  7. >Exactly what Petition would you have used?

    I'm not a petitions expert, and there doesn't seem to be one directly on point. A petition to the Director under 1.181 is what you use when the issue isn't covered by a specific petition type. I've run across a few of these "unhappy with prosecution" petitions in various file histories, and I think they were under 1.181.

  8. Karen,

    Great find. I've been a big advocate of interviews and even informal telephone calls to make examination more efficient ... but this record demonstrates that you can still take the best designed airplane in the world and crash it into the side of a mountain ...

  9. OMFG this thread is full of some much win and awesome my sides hurt!!!!!!!!

    "Then if a problem arose with the attorney-Examiner relationship, I'd think switching attorneys would help. But this is speculation on my part. "

    Just fyi, the attorney-examiner relationship is the applicant-examiner relationship. Unless the new attorney's tude changes then not much else is going to change over here.

    I love how they offered at the end of the AF amendment to submit an RCE for a new examiner lololol.

    "but this record demonstrates that you can still take the best designed airplane in the world and crash it into the side of a mountain "