By: Scott Chmielecki
Associate Attorney

Working with a Patent Examiner can sometimes feel like an exercise in frustration. Rejections that don’t seem to make sense, restriction requirements, and other seeming roadblocks can try the patience of any practitioner after a while. But guess what? Patent Attorneys and Agents can be pretty aggravating too. By and large, most Examiners do their best to find the patentable subject matter in each application they see, while preventing the capture of anything in the public domain (at least that’s what I strived for in my 10 years at the PTO!).

Admittedly, there are things that Examiner’s could do better. In some cases a lot better. But there are some things practitioners do that don’t help their relationship with Examiners. Here are just a few examples:

Asking “What will make this patentable?”

This one really irks the Examiner. They search the claims, which doesn’t necessarily give a complete picture of potentially applicable prior art. Finding the claim language that overcomes the standing rejection and gives the client the broadest possible protection is our job as attorneys. In short, Examiners aren’t situated to provide a good answer. Just don’t ask.

Being unable to make a restriction election over the phone

I get it. Some clients need to see everything in writing before making a decision. Sometimes you may not expect a restriction. But the Office encourages restriction practice, examining fewer claims generally takes less time after all, and all but requires a phone call before the Examiner can issue a written requirement. Making the election on the call means the Examiner can start working on your application immediately upon hanging up the phone. At the very least that reduces prosecution time. Besides, rejoinder is usually available if the withdrawn claims are amended in parallel with those being examined.

Arguing that restriction is “costly to the client”

The bar is pretty low for an Examiner to require a restriction. Cost to the Applicant is not one of the considerations, and won’t sway your Examiner into withdrawing the requirement (even if your client is one of the most profitable cell phone makers in the world!).

Complaining that “prosecution takes too long”

Mmm…I see you’ve paid the 6-month extension fee for every response you’ve filed in this application. Perhaps the blame for lengthy prosecution doesn’t solely rest at the feet of the Office? Just saying. 

Any mention of the fabled "RCE Gravy Train"

I was never able to find the platform to board the “RCE gravy train” while I was an Examiner. Yes, the Examiner receives the remaining credit from the original application once the RCE is filed. But the credit for working on the RCE is reduced as compared to a new application. Even if I allowed an RCE the same day it hit my docket, I would still need to post five, first non-final actions to hit my production quota for the biweek. I simply never received enough RCEs to significantly impact my workload.

As they say, “you get more flies with honey than vinegar.” No matter how frustrated you may get with Examiners, avoiding these pitfalls may make prosecution just a bit smoother.

Have questions about examinations? Feel free to contact me! Our team of experts are here to guide you through the waters of Examiner interviews at any stage of prosecution.