Patent It Yourself - PDF Archive

344 | Patent it YOURSELF
your claims just means one examiner, at one point, feels
that your claims are not different enough from the prior
art or clear enough to be allowed. You still are a good
and worthwhile person and your innovation may still be
patentable with revised claims, or if you successfully argue
over the rejection.
9. Dealing With the PTO Can Be
Frustrating and Unfair
Dealing with the PTO, as with any other government
agency, can sometimes be a very difficult, time-consuming,
and frustrating experience. I could spend a whole chapter
listing the errors and mistakes I’ve encountered recently,
but one example will suffice. I once filed an application for
an inventor whose last name was “Loe.” The filing receipt
came back with the name “Lee.” After several letters and
calls with no response, a “corrected” filing receipt arrived
with the name spelled “Leo.” After a few more calls and
much frustration, a correct filing receipt finally arrived.
Put succinctly, dealing with the PTO is not like dealing
with an efficient and competitive private company. All I
can tell you is to be philosophical, scrupulously check your
correspondence with the PTO to make sure they get it right,
and persist in correcting errors when they occur.
The Unlevel Playing Field
When you mail a paper
To the PTO,
Make sure it’s signed and dated
Or you’re in for woe.
Also make sure it’s sent
Before the deadline set.
And include the proper fees
Or you’ll incur a debt.
All pages should be present
And serial numbers exact
With a filing done quite properly
Or adversely they’ll react.
Their rules are very stringent.
If you make a teeny error,
Their penalties are draconian,
Designed to instill much terror.
But if the goof is theirs
They can lose your entire file!
They never are rebuked—
So play their game and smile!
As far as the unfairness goes—there are many situations
when you deal with the PTO (and the IRS) where you’ll find
an inherent unfairness due to no reciprocity. For example,
while you have to reply to an OA when the PTO tells you
to, they can reply to you whenever they get around to it.
Your patent term will be extended to give you a minimum
of 17 years of coverage provided the delay wasn’t your
responsibility. While you have to make your claims and
specification clear, grammatical, and free of spelling errors,
you’ll often find that the correspondence you receive from
the PTO doesn’t meet these standards. While you have
to pay a stiff fine if you forget to sign your check or make
some other inadvertent error, the PTO never is liable, no
matter how negligent they are. In other words, you’re playing
on an unlevel field. There’s nothing you can do about this
unfairness except, again, to be philosophical and resign
yourself to accept the rules of the game before you play.
As stated, the PTO is staffed by many young, inexperienced
examiners who often are not closely supervised, yet have
tremendous power over the fate of your application. Often
they are negative and it is difficult to convince them of
an invention’s value. The only solutions are to go in for a
personal interview (or have a DC-area attorney do it), to
persevere by filing an RCE (see Chapter 14), or to appeal.
One inventor was so frustrated that he sued his examiner
and the PTO for negligence. The judge said, “This is the sad
tale of an inventor frustrated by the bureaucratic mindset
and Byzantine workings of the PTO.” While he won in trial
court, the appellate court reversed, holding that examiners
are not legally responsible for their actions.
10. PTO Reference Books
During patent prosecution, you may need to refer to the
MPEP, the PTO’s Rules of Practice, and/or the patent
statutes. All can be viewed on or obtained from the PTO’s
website and the latter two can be obtained from regional
government bookstores in paperbound forms. Also, all
three can be obtained from the GPO, and the CASSIS CD-
ROMs at any PTDL. The PTO’s patent rules are given the
prefix number “1” to distinguish them from trademark rules
“2” and copyright rules “3.” For example, Patent Rule 111,
referred to later in this chapter, is officially identified as
Title 37 of the Code of Federal Regulations, Section 1.111, or
in legal citation form, 37 CFR 1.111. The Manual of Patent
Examining Procedure (MPEP), which is often referred to
as the “examiner’s bible,” covers almost any situation you
can encounter in patent prosecution and contains the patent
rules and statutes. It’s a large, loose-leaf volume with about
four megabytes of text, but you can view and print any part
(or all of it) from the PTO’s Internet site. The MPEP on the