Professionalism in Communications with the USPTO

I gave a talk last night in New York City, and I talked about various prosecution and litigation issues.  In attendance was a primary examiner.  We got to discussing nasty communications from practitioners.

She told me some things that should be obvious, but apparently my sense of what is obvious differs from a lot of practitioners.

First, being snarky doesn’t work.  Telling someone they are stupid is not going to advance prosecution.

Second, when a particularly nasty communication comes in, it becomes the topic of conversation.  “You won’t believe this one…”  It’s a small world so if you’re practicing in one area, being nasty to one examiner may affect your reputation among several examiners in that art group.

Despite those two fairly common-sense things, nasty-grams continue.  The OED occasionally gets involved.

Patent prosecution is, of course, an adversary process, with the practitioner attempting to overcome an examiner’s arguments as to why certain claims are unpatentable (among other things). Examiners are under time pressures, as are practitioners whose clients need efficiently delivered legal services. Sometimes that leads one “side” or the other to lose its cool.

That is understandable, and perhaps forgivable.

What seems to happen too often is that practitioners unload vituperative communications on examiners. This is probably counter-productive – telling someone they are stupid and wrong in my experience is likely not to change that person’s mind. Yet, practitioners persist in this nasty conduct.

Primary examiners have told me that when these sorts of nasty communications come in, they are passed around and ridiculed at the office. I doubt that is testimony to their effectiveness.

Beyond that, these are passed along to the OED. The OED has made it clear that it will not tolerate unprofessional behavior. In one recent disciplinary case, In re Schroeder, D2014-08 (May 5, 2015), the OED entered a default judgment against a practitioner who clearly went beyond the boundaries of decency. The practitioner wrote:

            Are you drunk? No, seriously … are you drinking scotch and whiskey with a side of crack cocaine while you “examine” patent applications? (Heavy emphasis on the quotes). Do you just mail merge rejection letters from your home? Is that what taxpayers are getting in exchange for your services? Have you even read the patent application? I’m curious. Because you either haven’t read the patent application or you are … (I don’t want to say the “R” word) “Special.”

The practitioner also stated:

Since when did the USPTO become a post World War II jobs program? What’s the point in hiring 2,000 additional examiners when 2,000 rubber stamps would suffice just fine? So, tell me something Corky, what would it take for a patent application to be approved? Do we have to write patent applications in crayon? Does a patent application have to come with some sort of pop-up book? Do you have to be a family member or some big law firm who incentivizes you with some other special deal? What does it take Corky? Perhaps you might want to take your job seriously and actually give a sh.t! What’s the point in having to deal with you Special Olympics rejects when we should go straight to Appeals? While you idiots sit around in bathtubs farting and picking your noses, you should know that there are people out here who actually give a sh. t about their careers, their work, and their dreams.

Perhaps indicating that he was having a bad day, on the same day that practitioner filed a response in another application. That examiner had also rejected the claims based on the prior art. Rather than overcoming the substance of the rejection, the practitioner wrote:

Apparently, the current Examiner to which this application has been assigned, does not speak the native language here in the United States of America. Perhaps in Farsi, really ancient Latin, or even the post-Nimoy Vulcan dialect, the word “stud” just so happens to be synonymous with the term “ridge”. But here in this country, the same country to which [sic] Examiner receives his stipend, the word “stud”, and the word “ridge” have two separate and distinct meanings.

He also wrote examiners were like “athletes who participate in the Special Olympics [who] might initially make the same mistake after a wild night of cocaine and strippers in Las Vegas.” Finally, he said he had consulted an online dictionary “called,” where, sure enough, a picture and name of the current examiner was found. Not surprisingly, enumerated synonyms include the following: ‘Down’s Syndrome, idiot, lazy, incompetent, blind, stupid, worthless.’”

Don’t do this.

About David

Professor of Law, Mercer University School of Law. Formerly Of Counsel, Taylor English Duma, LLP and in 2012-13, judicial clerk to Chief Judge Rader.

12 thoughts on “Professionalism in Communications with the USPTO

  1. 4

    Some thoughts from an examiner with prior prosecution experience:

    First, my approach is that my job is to make sure that Applicants receive the patent to which they are entitled, no more, no less. I don’t really look at some of the metrics that the Office provides, like my allowance rate, because that number is useless. If claims are novel, non-obvious, and satisfy the formal requirements, I indicate allowability. If not, I reject. I have no personal stake in the matter.

    I have never seen an overtly “nasty” communication from an Applicant. However, having worked for several years in prosecution, I can often detect the subtle messages in responses, usually to the effect that “you are stupid, examiner, but we have to be nice, so we are pretending to respond to what we think is utter nonsense.” Of course, I want to just send out a copy/paste final rejection and tell them to piss off, but I don’t. I vent to myself or a coworker for a minute, then go back to analyze their argument for any merit it may have. I also recognize that sometimes it is the client who wants to take a “stupid” course of action, or wants to have aggressive language for some or other reason.

    And I would never put anything other than bare facts and my rationale in a rejection. Like I said, it isn’t personal to me. I have a friend at the Office who likes to tell the Applicant that their arguments are stupid and why are they wasting money (again, usually not in those words, though actually in those words once in a while, or in an interview, I wish I’d kept a case number).

    Things that do piss me off as an examiner?
    -When Applicant’s representative has no clue about the art. (They suggest an amendment like, “What if we say that the fixing member is adhesive double-sided cushion tape? The art you cited doesn’t show that.” “Well, you’re right, I would have to go 103 with other art, but just so you know, that is the standard way of doing things in this field.” “Well, we’ll just have to see what you can find.” Guh.)
    -When Applicant’s representative argues trivial points like “but you cited paragraph 51 and its really in paragraph 50, so we should get a second non-final.”
    -Talking to me like I’m an idiot during interviews (usually it is new attorneys who do this, the older prosecuting attorneys are fairly friendly and laid back in my experience), especially since I know the art much better than most attorneys, and know the law and rules better than the newer attorneys.
    -Taking the shotgun approach with amendments, filing tons of unrelated dependent claims just hoping that one will work. Again, I generally know where you should focus your amendments based on searching hundreds of cases in the same field. If I can tell you don’t know what you’re doing, I’m less inclined to try and help you. If I can see that you are trying to focus your amendments and advance prosecution, I’ll probably call you and tell you where I think allowable subject matter is, because I can tell that you are actually interested in allowance, not just hoping that something sticks.
    -Calling my SPE if I don’t return your call immediately (or for any other reason, really, without talking to me first). Though, that actually has never gotten me in trouble, because my SPE knows me and will take my side. If I don’t get back to you in 1 day, call me again. Then, you can call my SPE after 2 days. You know how you don’t like having examiners call with last minute “deals” good only for 24 hours? We don’t like having you call us for an interview when the 3-month date is tomorrow, and you forgot to schedule the interview like your client asked you to last month.

    1. 4.2

      Nice post anony.

      I think (personally) that there are more examiners like you than the ones I typically read and deal with on the main blog pages.

      Someone knowledgeable is a pleasure to work with, even if we do not see eye to eye.

  2. 3

    I wonder where else in the world other than in the USA the dialogue between Applicant and Examiner is thought of as an adversarial process. I had thought that the relationship at the USPTO was one that ought to be not unlike the one at the EPO, where the Applicant and Examiner share an objective. Applicant wants a patent and the Examiner has a duty to grant one, that is, unless Applicant just can’t meet the statutory conditions for patentability.

    Perhaps it is the Presumption of Validity that makes the relationship adversarial in the USA. In other jurisdictions, Applicant wants to get to issue with claims that will withstand post-issue assault. If they can’t manage that, the claims are really not worth much. So, outside the USA, Applicant wants to hear from the Examiner about anything that might be the basis of a post-issue assault on validity, so there is still an opportunity to rectify the defect before the case seals, at issue.

    Apparently it’s different in the USA, where (if I see it right) no misgivings the Examiner has are ever welcome to the Applicant.

    1. 3.1

      Interesting supposition but I’m not sure it’s only that. Presumption of validity is merely a presumption, and as you’ve seen from recent caselaw, it’s not always worth much before real courts and it’s worth nothing before PTAB. However, the ability to hassle someone with an issued patent due to the high cost of litigation may be worth something to applicants who also have the money to make credible threats of litigation. Still, I find it hard to picture anyone in our profession getting worked up about an examiner who makes a good rejection.

      I would chalk the difference up to a cultural one: the EPO is based in Munich and the Hague, and works like Continental law. That’s why, for example, when you have an opposition, you can present multiple sets of alternative claims – showing your hand, so to speak, isn’t considered prejudicial, and frankly it’s a pretty efficient way to get to allowable claims with which the applicant/patentee can live. The US legal system is an adversarial system, period, and that carries over the USPTO. You don’t want to put your fallback positions on the record, that might prejudice your case later when you get to litigation, which is why experienced practitioners like face-to-face meetings (strangely referred to in legalese as “interviews”) with examiners, because it’s the one setting where such fallback positions can be explored off-the-record.

      That isn’t to say that all US examiners are hostile or adversarial (or that all EPO examiners are helpful partners, as I’m sure you know). Many US examiners understand that their role is to allow claims on patentable inventions and to reject other claims, and they’ll work with you to find the right claim language to do that. (Many of the examiners who fall into this category worked in private practice before becoming examiners; that may be the silver lining in the 2008 recession, in the wake of which many of them joined the USPTO.)

      But there are also many lazy and/or incompetent examiners, who will do the minimum to collect their paycheck, and who are blissfully unaware and/or indifferent to the harm they cause when they don’t do their jobs properly. Those people, unfortunately, are not just my client’s adversaries, they’re adversaries of the patent system, because they undermine it. I totally get where the guy who was disciplined was coming from, because I’ve seen it. Even had a case where, near the end of the quarter, an examiner copied another examiner’s OA from a different, formally unrelated case of the same applicant, just so he could make his quota. Didn’t even bother to correct the claim numbers, which were wrong since they’d come from a different application, let alone relate to the actual language of the claims in the case at hand. It’s really frustrating to come back to a client and essentially have to say, we need to spend more of your money because this particular examiner is really dense, possibly deliberately dense. (That particular examiner is still at the PTO, by the way. Let’s hear it for public sector unions!)

      But yes, going ape on an examiner in a response, no matter how wrong or deliberately obtuse he is, is not going to serve the client’s interests. Better to assume the examiner is acting in good faith and reply accordingly, no matter how great the urge is to tell the examiner where he can get off.

      By the way, David, we don’t “deliver” legal services. You deliver apples, or automobiles, or ink cartridges – tangible goods. We *provide* legal services. I’d be happy to discuss the difference with you offline.

      1. 3.1.2

        Thanks Dan. That explains a lot. But don’t dependent claims reveal your fall-back positions, as early as Day 1? Is this why, in the USA, they are so often so poor?
        I put it to you that an anxiety to keep your powder dry, so effective under First to Invent, will be the demise of many a case under FItF. Outside the USA the quality of the dependent claims as filed with the application will often be decisive to the outcome .


          Bad claims are always….


          Doesn’t matter whether they are dependent or independent whether or not they are as filed or as amended.

          Your post contains no inaccuracies, but is immensely non-satisfying at the same time.

  3. 2

    Somewhere I saw a blurb about the patent attorney role being filled by technical types who are highly intelligent but with low emotional IQs which leads them to believe that they are right and that anyone who disagrees with them are wrong in the worst way and leads to things like the above.

    Others have specifically commented about the uniquely bitter and contentious nature of patent litigation.

    1. 2.1

      I’m on a panel in November in ED Texas with some judges and deans about professionalism in patent litigation, and it will be interesting to hear their take. The problem from the outside is that we only read the really nasty things that get written up; are they the tip of the iceberg or the truly rare occasion?

  4. 1

    “Patent prosecution is, of course, and [sic] adversary process”, this is often where many practitioners go off track. While the relationship between attorneys and examiners can sometimes be adversarial, most experienced attorneys know that examiners are more like judges than adversaries. It’s the examiner that you have convince as to the merits of your argument. We see ad hominem attacks and flippant insults from attorneys way too often. Most of the time it just makes you shake your head. You have to ask what attorneys hope to gain by insulting the person you have to persuade.

    Most of the time they aren’t reported to the OED. In re Schroeder was a somewhat unique event where the response went viral within the patent office and then made this blog, so the OED had to act. Most responses that lack decorum and courtesy don’t make it to a desk in the OED office, but they often get passed around and attorneys earn reputations quickly from these incidents. Again, if you’re frustrated with an examiner’s position don’t vent that frustration in your written response to an office action, that’s what therapists and bartenders are for.

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