Patent It Yourself - PDF Archive

ChaPter 13 | GETTING the Pto to DELIVER | 343
if it’s otherwise proper and harmless. This is the result of
bureaucratic attitudes—that is, examiners like others in
government sometimes have a tendency to rigidly enforce
a “standard” administrative procedure. The remedy is to
explain to the examiner that what you have done is proper
and to respectfully challenge the examiner to provide
a specific reason for the objection and a suggestion for
correction. The next paragraph shows how I responded to
an examiner who objected when I typed “stateless” in the
citizenship blank of the declaration form, even though the
applicant was stateless; the examiner did not repeat the
objection again.
“The Objection to the Declaration: The Office Action
objected to the Declaration since it listed the citizenship of
the applicant as “stateless.” The Examiner required a new
declaration. Applicant does not understand this objection,
the legal basis therefor, or what remedial action the
Examiner would like on any new declaration. Applicant’s
citizenship is indeed “stateless.” In the past, applicant’s
representative has filed other patent applications for
various stateless individuals. He always listed their
citizenship as “stateless” and all of these cases went on to
patent without ever before encountering any objection.
Therefore applicant respectfully submits that the
“stateless” entry is proper.
“Applicant is willing to file a new declaration if the
Examiner still desires, but he doesn’t know what the
Examiner would like applicant to enter in the Citizenship
blank in lieu of “stateless.” If the Examiner continues
the objection, applicant respectfully requests that the
Examiner explain what specifically he objects to about
the “stateless” entry, the legal basis for the objection, and
exactly what replacement entry Examiner would like in
any new declaration. Thereupon applicant will be pleased
and eager to comply. Note that applicant cannot enter any
specific country in the Citizenship blank since he is not a
citizen of any country.”
7. Standards of Patentability Vary Widely
While I’ve tried to give the proper standards of patentability
in this book (see Chapter 5), what actually happens when
your application is examined will vary, depending upon the
personality, whims, training, and current emotions of the
examiner assigned to handle it. Most examiners adhere to
the basic standards of patentability outlined here and are
competent, knowledgeable, and occasionally helpful when it
comes to telling you what to do to put the case in condition
for allowance. Some even go further, suggesting claim
language that would be allowable, making improvements in
unclear wording, and otherwise taking other constructive
and helpful actions. Unfortunately, a small number of
examiners are very new and inexperienced, new to the U.S.
and unfamiliar with English, incompetent or superficial,
mean and vindictive, unable to comprehend a true advance
in the art, ignorant in the field or art being examined,
or lacking in the requisite sensitivity to appreciate the
huge financial and work burdens their acts might impose
on applicants. This can sometimes lead them to make
arbitrary, irrational rulings and deny patents that should be
granted or vice versa. Services have deteriorated everywhere
in recent years, but especially in the PTO.
The solution to the problem with an unreasonably tough
or inexperienced examiner is to, first, be persistent. Go to
the PTO (or hire a patent attorney to go) to interview your
examiner. If necessary, appeal. Appealing is a powerful
weapon against a tough examiner. Examiners don’t like to
write answers to appeal briefs since these take a lot of time.
Also, they usually must have an appeal conference with two
other examiners, and it looks bad on their record if they
get reversed.
The problem with an easy examiner is that your allowed
application might not stand up in court (should this
ever become necessary). Accordingly, if you believe that
your examiner is not rigorous enough (for instance, all
your claims are allowed in the first Office Action), make
especially sure yourself that at least some of your claims
are clearly patentable. That is, they should define a novel
enough invention to withstand a court challenge. (See
Chapter 15.)
It may help to know that examiners themselves have
to contend with two opposing forces. On the one hand,
they’re expected to dispose of (allow or get the applicant to
abandon) a certain number of cases. However, on the other
hand, they’re subject to a quality review program to make
sure they’re not too lenient.
Note that even if you have a great invention that is clearly
patentable, but you haven’t claimed it properly, most U.S.
PTO examiners, unlike their counterparts in the European
Patent Offices, won’t volunteer help or constructive
suggestions or try to assist you. They’ll simply reject your
claims or make a requirement and leave it to you to figure
out how to do what’s necessary to remedy the situation.
Thus, it’s up to you to claim and fight for what’s rightfully
yours. Never automatically accept any examiner’s rejection.
8. Don’t Take Rejection Personally
If the examiner rejects your claims, don’t take such
a rejection as a condemnation of you personally. The
examiner doesn’t know you and is thus merely rejecting
your claims and not you. In other words, a rejection of