Let’s face it. Attorneys like to argue. We just love to show how brilliant we are! And, at least for patent attorneys representing clients before the US Patent Office, it’s clear we love to display our brilliance in writing: only around a quarter of all applications have an Examiner Interview associated with them.
Yes, I get it, we do need to zealously represent our clients, and push for the broadest protection we can. But are written arguments in response to Office Actions always the best approach? Here are some reasons why we often should hold off on submitting that brilliant response to the Office action, and some examples of when the written arguments are a must.
Reasons to Avoid Written Arguments
1. Claims that issue based on an Examiner Interview are SCARY. Claims that issue based on 14 pages of attorney arguments usually are not. Here’s why.
Let’s say an attorney performing a freedom-to-operate search for a client comes across a patent with a prosecution history like this: (a) application filed, (b) office action, (c) dlaims amendments stating simply “as discussed between the Examiner and Attorney, here are the allowable claims…”, (e) notice of allowance. What happens? I don’t know about other attorneys, but I personally get a little sick to my stomach, thinking I just might have to tell my clients they need to redesign a product. The reason we have to take this careful and conservative response is that we don’t know for certain how the claims will be construed, so we have to assume the claims mean the broadest that can be reasonably understood from the claims and specification alone. This is usually bad for the client seeking freedom to operate.
On the flip side, if the attorney comes across a competitor’s patent that only issued after extensive written attorney arguments, we KNOW that, somewhere in the mountain of documents, a statement was probably made that I can use to the client’s benefit. Effectively, we can and will find where the scope of the claims is effectively narrowed, meaning we can give the client a green light to proceed with their work.
I especially love to see a patent that issued after four office actions and an RCE, as those are the easiest to discount in an FTO. (But see exceptions at the bottom of this article.)
2. Written arguments have the potential to do great harm, and almost no potential to do good. (There is an exception to this rule, which I will explain later.) The potential harm is that the written arguments, which are made public, also can be used when the patent is litigated to lock the litigator into a particular argument. It is not a good feeling to learn in the course of litigation that a client’s claim which we want to be interpreted as meaning either A+B*C or (A+B)*C can only mean (A+B)*C because of statements made by the patent attorney five years ago in a written argument. But if the patent attorney had argued the patentability by phone instead of in writing, the litigator would be less likely to be locked in to one argument.
Of course, even if we do use an Examiner Interview to make the point, the Examiner could negate some of the benefits above by writing the same thing in an Interview Summary. But, as I have found, Examiners generally are open to discussing exactly what should be written in the Interview Summary, so that very limiting language can be softened.
3. Written arguments are expensive, and the expense often isn’t justified. In my experience, it is the case that a 15-minute call can replace about two hours of written work. I’ll refrain from joking about how much the 15-minute call can save…
4. Written arguments are usually not necessary to begin with. Instead of spending 10 hours preparing your written arguments, why not just pick up the phone and call the Examiner? Ask for an Examiner Interview to go over the issues raised in the Office Action, and, most likely, the result will be a claim that will let you sleep well at night. For example, I once had an Examiner who really didn’t grasp the distinction in my claim, which was a bolt moving into or out of a stationary nut, as opposed to a nut moving on or off a stationary bolt. To convince the Examiner in writing that the Applicant deserved a patent for essentially this feature would have taken quite some time, so I gave the Examiner a call.
And the result? Within 15 minutes, this issue was settled, as well as a few other misunderstandings by the Examiner that hadn’t made it into the Office Action. Meaning that I avoided a Final Office Action for those other issues we didn’t know about.
5. Examiner Interviews help the attorney develop a positive working relationship with the Examiner, especially if the attorney handles many applications in the Examiner’s unit. Many Examiners work from home, and they get lonely. They appreciate the call. If you give the Examiner a call and talk to her a moment about how her toddler just started pre-K, guess what happens? First, she’s going to give you a heads-up about some other publication that she knows about in the back of her head, so you don’t take your response in the wrong direction. And six months later, instead of issuing a Final Office Action, she’s going to call you, and you are going to authorize some minor Examiner Amendments to get the patent to issue, instead of having to tell your client he needs to fork over another couple grand for an RCE.
When to Use Written Arguments
1. Written arguments can be used to ensure the validity of claims that issue. Sometimes, we learn in the course of prosecuting a patent that the term longitudinal might mean transverse (seriously?). On top of this, we might learn that the meaning of transverse might make the claim unclear, and we can’t find a helpful definition in the specification. So what do we do?
We submit written arguments, and in the written arguments, we clarify that longitudinal really means longitudinal – not transverse – and we get the patent to issue, knowing that the competitor’s attorney can’t (or at least has a tough time) convincing a court the patent is invalid because of indefiniteness. We saved the patent with the written arguments.
2. Written arguments may be necessary in a very crowed field, just to secure a patent in the first place. This point is self-explanatory. And another critical point here is making sure the client understands that there may be a narrow band of space to operate. But if that narrow band is the client’s primary business anyway, this may be acceptable.
In short, I suggest that we patent attorneys take a moment to consider whether or not written arguments are really the right approach, and only use written arguments when we are certain they are truly a benefit to the client. Examiner Interviews can be quite powerful, and I personally use them in the vast majority of my cases.
Please let me know what you think at firstname.lastname@example.org or comment below.
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