If you learn that your case is being examined and you have related ones in front of that examiner/art group, call him. They have incentives to get them done that way if they can. There’s also something called “first office action estimator” on the PTO site that you can use to guestimate.
If you’re pondering doing an RCE versus a CON, call the examiner because they may be able to give you timelines on each, suggesting which will get you a patent more quickly.
I’ll add to this as it goes on. Again, live-posting so excuse any typos.
They’re doing a lot of live and on-line examiner training to deal with AIA/FITF cases, since those will be popping up for examination “soon” (in patent-prosecution terms). They all say don’t check the “statement under 37 cfr 1.555 or 1.78” box on the application data sheet for a CON or DIV if a claim has an effective filing date after the AIA, because they’ll treat it as AIA forever until you fix it. “You are committing malpractice.” I’m not sure I understand their point – hard to read the slide and I don’t know this form. The more I think about what they said, the less sense it makes: if it does have a post-AIA claim then you have to check that box. See 2 paragraphs below.
The training materials are on the PTO web page.
There’s a lot of discussion about whether to file a preliminary amendment the day after a CON to avoid having an entire case become AIA if you added new matter after the ultimate parent and post-AIA to support a new claim. The SPEs seemed confused about this issue, so that may explain why my notes are not clear. This relates to that box – be careful about that box is the only clear lesson!
I now own a cool laminated card that shows what counts/doesn’t under the AIA. If you email me I’ll try to send a photo copy. Nice and in color! Shows the grace periods, etc for the 102 provisions. If many of you email I’ll put it up here.
Surprisingly, a few people actually are examining AIA/FITF cases (besides the Track 1 stuff).
In traversing rejections, they highly recommend to refer to the MPEP/guidance document (e.g., from the 101 guidelines). “Don’t rub their nose in it” but if, e.g., unexpected results exist point to the MPEP section that says “unexpected results means non-obviousness.” “Don’t paraphrase the MPEP” but instead quote it. The examiner will have more comfort — know you’re not shading/spinning.
Regarding new matter, don’t rely on the examples in the MPEP blindly but if you find one point the examiner to it so you can better cabin and identify the issues. If you are adding new language to claims, even though not required, point to where in the spec the support is, so they don’t waste time. This is also a good check for you to make sure you have support. But, don’t be too specific where you point to (for litigation/enforcement). Use general language or “for example, support can be found at…” This is especially useful to point out support if there’s one spot in a huge spec for the support. Some practitioners are using page/line to point out support to avoid the new matter rejection.
Regarding interviews, they’re helpful but be sure to ask that the SPE or primary be present. Often examiner and lawyer will be talking past each other and so having third party hear the problem. Interviews can be helpful even if don’t result in allowance it will cut down on the number of issues. Ask if the rejection can be overcome by X, Y, or Z. When you call to set up an interview, say “I want to compact prosecution.” Don’t show up in a suit and let them know ahead of time you’re not dressing up to make it more informal/negotiation. (That’s a smart one!). If you want to have discussion-purposes-only claims, that will not work: regs/procedures say everything written has to be part of the file. (Apparently some folks are doing this. Anything written/emailed should end up in the interview summary.) SPE said “ask for copies back.” Not sure I’d be comfortable with that since a reg says anything in writing must be part of the file. Thoughts?
In person interviews deemed to be marginally more helpful than phone interviews. (Interesting.)
Timing of interview: after first OA, before response. Not after response. Don’t put at end “if this doesn’t work call me.” The time to interview is before you write response, due to examiner incentives. But, some examiners want the response before responding to the OA.
They’re about to get to eligibility! The flow-chart (infamous) about if the claim “directed to” a law of nature, a natural phenomenon, or an abstract idea you have a 101 problem unless the claim adds “significantly more”.
Sigh.
I’ve got to head off.
The shameless grubbing for tickets on the RCE gravy train displayed over and over by Random Examiner never ceases to amaze. And annoy.
“Don’t paraphrase the MPEP” but instead quote it.
This is always a good rule. I’m an attorney but most of the others aren’t, so the MPEP is the bible most of the time. I can’t tell you how many times people quote In re Dossel when the MPEP largely ignores it in favor of Aristocrat (a fair thing to do, given Aristocrat postdated and largely contradicted Dossel). I just finished a case where the guy spent over 4 pages discussing his spec in terms of dossel, poor guy.
Regarding new matter, don’t rely on the examples in the MPEP blindly but if you find one point the examiner to it so you can better cabin and identify the issues. If you are adding new language to claims, even though not required, point to where in the spec the support is, so they don’t waste time.
Also good advice. I would call it mandatory if you add a negative clause.
Regarding interviews, they’re helpful but be sure to ask that the SPE or primary be present. Often examiner and lawyer will be talking past each other and so having third party hear the problem.
Remember that a non-primary has no authority to either allow or to withdraw a rejection, so if the question is one of allowance rather than “will you need to cite further art” you’re not going to get a positive response. Don’t expect to get a useful answer to the further art issue without at least providing a possible amendment beforehand.
It is true that regs require all documents to be part of the file. I am not aware of anyone that follows this regulation though. I take discussion purposes only amendments all the time and never make them part of the file. In fact everyone I know will say anything you want us to say (so long as its true) – we’ll be as detailed or undetailed as you want.
Timing of interview: after first OA, before response. Not after response.
I personally always take interviews because the hour of other time is worth it, but I also know a significant number of people who won’t take any after final. I also recently had a few where the interview was requested after the amendment or after final was filed. That’s of no help. If you file an after final you better call the examiner that day because there’s every possibility they will have done it even if you wait a day or two.
Timing should be common sense – when you win on argument the examiner has to start over and doesn’t get paid for it. If you’re after final and the examiner withdraws the rejection and enters a new one you’ve essentially cost him 20-40hrs of pay. Consequently, you won’t see a lot of people jumping at that.
I’ll tell you something that will make an examiner move off of art you don’t like: Start out by telling him you don’t like the art, and show that XYZ is bad, and then say you’re willing to work with them and will file an RCE/amend anyway, but you want the art changed. When there’s no personal loss to the examiner in the equation, the examiner is more likely to do what you want. Is the fact that our system set up in such a fashion that that is a problem? Yep.
Thanks! It was a great conference; I was typing too fast though!
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