Sunny Side of the Examiner, Part 2

There are many tips for successfully working with your patent or trademark examiner. For example, the application process is smoother if only one person attends an in person interview or telephone conference with the examiner. If you are the inventor or application owner, then the conference should be attended solely by your proponent for several compelling reasons.

First, you are more “emotionally involved” than the examiner and attorney will be during the telephone or in person conference. The invention or trademark is your baby and you want to be sure that it receives all the consideration it deserves. Consequently during a session with the examiner you may become agitated, inadvertently speak out of turn or otherwise react in an inappropriate manner. Secondly, your attorney has more experience with maintaining confidentiality of information in a potentially adversarial setting. If you are the client most likely you do not have this expertise, especially in an unfamiliar administrative proceeding such as patent or trademark prosecution. There is a greater risk that you will divulge sensitive information to the examiner during the discussion.

Thirdly, the client may improperly interject new information into the conference and confuse the issues. Ideally, in a patent or trademark preceding all communication between the proponent and the examiner is written and “on the record.” This written record facilities understanding whenever someone, such as a judge, reviews the case and requires clear accurate representation. If a client adds information not of written record, the purpose of the conference becomes unclear and disorganized to the examiner. Moreover he or she has prepared for the conference by reviewing the written record and not by ad hoc consideration of assertions not previously raised.

A client may maintain that he or she must participate in the conference to explain the invention to the examiner. The proponent should reply by strongly recommending that the client not be present at the conference even for this purpose. The client’s explanation may include technical information not present in the pending application. This information is generally of no use because the application’s technical content can only be modified by submitting another application.

Furthermore, although the invention may be crystal clear to the inventor, it is not intuitively so to others and should not be explained as such to the examiner. The client’s explanation may further confuse or frustrate the examiner, as well as disrupt the proponent’s train of thought or strategy. The client’s explanation may also be inconsistent with the attorney’s representations in correspondence, or in the originally filed application. Finally, you can probably predict the examiner’s reaction if you and your proponent repeatedly contradict each other during the conference.

The client must trust the proponent to do the job. This means that the client must assume the proponent understands the case and can adequately explain it to the examiner. If the proponent does not sufficiently understand the invention to explain without assistance, then that proponent should not be responsible for the case.

© 2010 Adrienne B. Naumann

Ms. Naumann does not sponsor or endorse advertisements at adriennebnaumann.wordpress.com.

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