We are often asked whether we can save a patent application that has gone through several rounds of amendments and arguments with the patent office examiner, without any light at the end of the tunnel. In these cases, the client has generally already spent a few years and many thousands of dollars on writing and prosecuting the patent application and is debating whether to continue fighting or to give up.
When a client asks me this sort of question about a patent application that someone else has written – most often a patent attorney in another firm – I start by taking a close look at the present claims and at the examiner’s grounds for rejection. Very often, the examiner will have taken liberties in interpreting the language of the claims very broadly, and on this basis will hold that the invention is obvious in view of references that appear to be only marginally relevant to the client’s invention. Examiners are trained to apply this sort of interpretation, in order to force applicants to define their inventions more sharply and narrowly. Sometimes we can come up with better wording that will satisfy the examiner.
On the other hand, there are many cases in which we conclude that the claims as they stand cannot be saved, perhaps because the language and concepts are too fuzzy, or key elements of the invention have been left out. Sometimes the examiner is simply right. In these cases, I take a deep dive into the description and drawings in the original patent application, and also into the references that the examiner has cited. I look for specific features or perhaps use cases that were not brought out clearly in the existing claims and appear to fall well outside the scope of the references, and I write new claims covering these features or use cases. Even when the new claims appear to be narrow, they can be commercially valuable if they cover important product features – This is a point that I check with our client.
When I have prepared the amendment or written new claims, I usually try to arrange a telephone call – known as an “interview” – to present it to the examiner. Patent examiners are almost always appreciative to see that the applicant has taken their opinion seriously and is trying to meet them halfway by making a substantial amendment to the claims. The phone call is also a better medium for explaining the substance of the invention and the problem that it solves, by comparison with simply filing written remarks.
We then file our claims and arguments and keep our fingers crossed. In most cases, we are able to get the patent allowed in one or two rounds.
But there are some cases in which the examiner just cannot be persuaded, despite our having done our best to write sharp, clear claims, supported by strong arguments. At this point, we offer our client the option of appealing against the rejection. Appeals go first to the examiner’s supervisor for review and from there to a special appeal tribunal, known in the US as the Patent Trial and Appeal Board (PTAB). Similarly, the European Patent Office has Boards of Appeal, and the Chinese National IP Administration has a Patent Reexamination Board. These tribunals are made up of specialized, experienced patent judges, who take their jobs seriously and, in our experience, look at each case objectively, without favoritism (yes, even in China).
When we reach a dead end with the examiner – despite having sharp claims and strong arguments – we appeal aggressively. It is the only way to keep the examiner honest, and often the only alternative to abandoning the patent application and giving up the fight. We invest time and effort in writing a persuasive appeal brief, setting forth our legal and technical arguments in detail. In many cases, after reading our appeal brief, the examiner will give in and allow our application to issue as a patent, rather than trying to answer our arguments. When the examiner does submit an answer, we file a reply brief, refuting the examiner’s points. The case then goes into the queue for consideration by the appeal tribunal. In some appeals, we ask to make an oral appearance to present our arguments in person, but in most cases we rely on our written arguments and just wait for the decision of the tribunal.
We have a high rate of success in our appeals. In our recent experience, PTAB has reversed the examiner’s rejections of our claims in whole or in part in more than 75% of the appeals that we have filed. If we include the cases in which the examiner chose not to answer our appeal brief, the success rate is even higher. Bottom line – Even if you think your patent application has reached a dead end, do not give up. Give us a call.