Some of us fondly recall the movie Apollo 13 in which Tom Hanks portrayed Jim Lovell as one of the mission astronauts trapped in outer space. Ed Harris portrayed the ground controller who would not admit defeat, and he ultimately guided the astronauts safely to Earth. I always remember this movie when people inform me that a United States patent examiner fails to understand their invention.
My advice is always the same. First and foremost, it is your patent attorney (or agent’s) responsibility to prepare for this possible outcome early in the game. The application must be written in a clear coherent manner with sufficient details, along with a description of the invention’s general characteristics. If the invention is mechanical or a consumer device, the drawings must be detailed, and the text must contain frequent references to the appropriate drawings. There should also be drawings of the entire device or machine, as well as drawings of portions thereof.
Let’s suppose you accomplish this, and yet the first time the examiner responds it is clear that he or she does not understand the invention. This is the only point in the patent prosecution in which you can further explain the invention in declarations and the text of your reply. You should add additional drawings as well as photographs if visual means will assist in your explanation. This may result in a huge pile of papers to send in response to the first examiner’s letter, but if this is necessary there is no other option.
Let’s suppose you do this and yet the second time the examiner responds it is clear that he or she still does not understand the invention. You have two options at this point. One is to submit an appeal, after which two qualified persons will review your file along with your examiner during pre-appeal proceedings. In my experience this three person review often clarifies the nature of the invention, and subsequently my client receives instruction to complete the case. If not, the case is reviewed by several administrative judges and their law clerks, so other persons have an opportunity to review your explanations. In my practice one case reached the administrative judges, where it was understood and allowed after we submitted a single paper.
Instead of an appeal, another option is to submit what is known as a request for continued examination. With this procedure, for additional fees the examiner will review your case again, and you have a second opportunity to present another explanation and illustrate your invention. You could also send your attorney to the patent office in Washington, D.C. to explain the invention to the examiner in person.
I strongly recommend that clients refrain from requesting a different new examiner. The request will be denied and the bad will it generates may hurt a case in the long run.
© 2010 Adrienne B. Naumann
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