Much has been written about preparation of a strong United States patent utility application. However, strangely enough, there is less literature about communication with an examiner, although this skill can make or break your case. Consequently, here are my recommendations based upon twenty years of experience with government examiners. “Examiners” includes patent, trademark and copyright examiners, but I address primarily United States patent examiners.
First and foremost, patent examiners should not be treated as opposing parties in litigation, because they are government agents who initially review applications on the merits. Whenever the application proponent contacts the examiner, he or she must realize that examiners are analogous to trial court judges and should be treated accordingly.
Second, you should maintain a written record of all conversations and conferences with the examiner. Your record should include letters to the examiners prior to a telephone call, or followup letters that include a summary of that telephone conference as well as issues resolved. You may also include a summary in the reply to a formal examiner’s letter if the reply has a deadline pending in the near future.
Third, the application proponent should not shout, swear, or threaten the examiner in written correspondence, during a telephone conference or during an in person interview. I previously was employed by the government, and for some reason private attorneys routinely took this approach. I can guarantee that this manner of dealing with the government goes nowhere.
Fourth, there are only a few instances in which the application proponent should contact an examiner’s supervisor. It is appropriate to contact the supervisor whenever the examiner has not responded to your correspondence or telephone messages, and there is a deadline that depends upon the examiner’s input. Another appropriate instance occurs whenever the examiner is non-responsive during a telephone conference, is abusive to the point where nothing can be accomplished, or he or she threatens the proponent.
The proponent should not request the examiner’s supervisor to resolve a disagreement on the merits of the patent application, because this is not his or her responsibility. Depending upon the dispute, you should either submit a petition to the Patent Commissioner’s office, or seek recourse to the Board of Patent Appeals & Interferences. Similarly, the proponent should avoid a request that the supervisor assign a different examiner. This request is generally denied, and it creates bad will that may return to haunt your case.
© 2010 Adrienne B. Naumann
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