Patent It Yourself - PDF Archive

350 | Patent it YOURSELF
excessive it is possible to complain to the examiner’s
supervisor, but frankly supervisors usually support the
examiner in these situations.
34. Limitations on Number of Claims
As indicated in Chapter 10, the basic filing fee entitles an
applicant to submit three independent and 20 total claims.
If an application is filed with or amended to have over
three independent claims or over 20 total claims, the PTO
requires a large fee for each extra independent claim and
a medium fee for each extra total claim. However if you
file more than the basic “3/20” allotment of claims, be sure
that they differ significantly because examiners don’t like
to examine a lot of claims, even if you pay for them. The
examiner can reject excessive claims (that is, they do not
differ substantially) as unduly multiplied.
35. The PTO Has Been Very
Difficult on Applicants
In the period between 2007 through 2009, the PTO was
very difficult on applicants by making numerous Whacka-Mole
rejections (see Item 33, above), making far-fetched
rejections, using a very high standard of patentability, being
antagonistic to applicants and attorneys, and refraining
from assisting applicants or making any constructive
suggestions. One examiner, in an anonymous post on the
Internet, said:
“My view is that under [the last Commissioner] the Patent
Office became the Patent ‘Rejection’ Office, and instead of
trying to protect IP rights (which is our purpose), USPTO
management’s solution was to hire lots of people to reject
out of the problem. This led to an assembly line of under
trained, unknowledgeable examiners who were taught
how to reject, but not how to get applications to allowance.
This ‘reject, reject, reject now’ policy is encouraged by
management’s policy of issuing a written warning on an
examiner’s permanent file for allowance error percentage
above 10%. While this may seem high, if you only allow 20
cases a year it is no problem for quality to find some kind
of error in your cases, especially when they aren’t experts
in your art. Additionally, there is a lack of motivation
to get cases allowed, because there is no incentive for the
examiner to do the extra work required to arrive at claim
language which can be allowed. Getting claim language
to this point takes me several phone calls with attorneys
and/or inventors due to the fact that disclosures typically
contain multiple inventions, but claims must be limited
to one and because the attorneys and not the inventors
usually draft claim language which is usually broad. Add
the time spent on phone calls to the lack of credit/counts
given for time spent responding to amendments and the
examiner is further discouraged from getting cases to
allowance.” IPWatchdog.com (Blog of 2009 Mar 17).
A similar view was expressed by noted patent gadfly Greg
Aharonian in one of his blog entries at www.BustPatents.
com. What’s the answer? The only recourse that I can see is
to prosecute your applications as instructed in this chapter,
attacking each improper rejection and appealing when
necessary. Make sure your claims are in optimal condition
and define your invention’s novelty over the references
taken individually or in any combination. If necessary,
file a continuation (use an RCE—see Chapter 14) to revise
your claims after a final action. Don’t hesitate to appeal if
necessary. If you appeal, be sure to try a “Pre-Appeal Brief
Request for Review” (see Section J4, below). Always keep
you temper and don’t attack your examiner personally since
he or she is merely following instructions.
Remember to always use the two-part 102 (novelty)-103
(unobviousness) approach whenever you argue patentability
—see Inventor’s Commandment 7 in Chapter 5.
36. Avoid Fraud on the PTO
In all of your statements, arguments, and representations to
the PTO you should be careful to be honest and forthright
and not to make any statements to the examiner by which
you intend to deceive, mislead, or “snow” the examiner.
This is because a court can hold your patent invalid if it
ever discovers that any statement that you made to the
PTO amounted to “fraud on the PTO” and you intended
to deceive the PTO. E.g., if you intentionally misrepresent
the operation or construction of a reference or claim
false and excessive results for your invention, and your
adversary discovers this later in litigation, they will bring
it to the attention of the judge, who will likely hold your
patent invalid. So always state the truth, the full truth, and
nothing but the truth.
37. Keep Your Remarks as Short as Possible
There are a number of reasons to keep your remarks as
short as possible. First, examiners tend to be put off and
hence may not read overly long responses. Their time is
limited and they are under pressure to dispose of (allow or
have the applicant abandon applications). So to get your
remarks read, keep them as short as possible, but include
all the arguments that you feel are necessary. Second, as
noted by patent attorney Michael E. Kondoudis (www.