Effectively Responding to a Patent Examiner's Opinion of Obviousness
Challenging obviousness rejections proferred by patent examiners in a way that does not offend the examiner can advance the examination of a patent application to a beneficial conclusion.
When I take my car to the shop these days, the “tech” mechanic hooks it up to a computer and the analysis system displays the exact status of all the onboard system elements. When I apply for a patent, one of 9,000 patent examiners formulates their own written opinion of why they believe my invention is obvious and not patentable. The prosecution then usually goes this way: I amend my application and argue against the examiner’s opinion of obviousness.
In the case of taking my car to the shop, it’s all business—nothing personal. The computer goes through its analysis and identifies what needs to be fixed. In the case of having my patent application examined, it is of course personal to me, but it also can become personal to the patent examiner handling my application. The current trend advanced by the news and social media promotes one’s right to be offended. Instead of just accepting a certain situation and letting go of being offended, the trend seems to be not only acknowledging the offense but holding onto being offended.
Patent examiners should not take the examination of patent applications personally. They should be unbiased and not get offended when, during the prosecution of an application, a patent applicant disagrees and argues against their position. In general, it might be easier for older, more experienced examiners to not take things personally during exchanges with patent applicants throughout the examination process. Over the years, most older examiners tend to get used to these types of exchanges.
Newer examiners who are just “learning the ropes” might not be used to patent applicants always disagreeing with them and their opinions. These examiners typically invest more time and effort into formulating their opinions early in their careers, while they are learning and trying to show their examiner-mentors their developing skills and understanding of the process. Newer, younger examiners might also be more exposed and influenced by the current trend of promoting the right to feel offended. In a similar manner, patent attorneys and patent agents can get frustrated with examiners during the examination of a patent application and also take things too personally.
In responding to a patent examiner’s rejection of a patent application that is based on the examiner’s opinion, one can respond by either telling or showing an examiner that they are wrong—or a combination of these two approaches. Merely arguing that the examiner is wrong is an attack on the examiner’s opinion and challenges their technical expertise and understanding, thought process, logic, conclusion, and other personal qualities and skills.
Responses that are focused on pointing out differences that are found in an applicant’s patent application and each of the prior art references can shift the “blame” of disagreeing with an examiner’s opinion to the prior art. It can become the prior art that precludes establishing that a patent application is not allowable.
Admittedly, this can be a bit challenging. However, pointing out the differences in an applicant’s patent application and the prior art gives the examiner the opportunity to conclude for themself that their initial position was off. This limits the chances of offending the examiner and creating a confrontational situation. No one likes to be told they are wrong, and few people like to concede or admit it.
A Positive Result
Patent examiners are charged with determining “obviousness” for purposes of deciding the patentability of patent applications. Obviousness is by nature subjective and somewhat arbitrary. It is nearly always raised by examiners during the examination of patent applications, which results in challenges by patent applicants.
Challenging obviousness rejections proffered by patent examiners in a way that does not attack an examiner’s opinion and offend the examiner can advance the examination of a patent application to a beneficial conclusion. The success of such a strategy can depend more on a patent applicant or their patent counsel than the examiner.
Michael Gzybowski is an intellectual property attorney with Brinks Gilson & Lione. He has over 30 years of experience, including serving as a patent examiner at the U.S. Patent and Trademark Office prior to entering private practice. He can be reached at firstname.lastname@example.org.
Any views or opinions expressed in this column are those of the author and do not represent those of Ceramic Industry, its staff, Editorial Advisory Board or BNP Media.