Patent Law

Strategic Use Of A Deficient Office Action (or Why a Call to an Examiner Might Not Be In an Applicant?s Best Interests)

By mike

I have received numerous comments, both public and private, about my earlier post on avoiding improper final rejections. In that post, I outlined a practice of advising the Office when a next Office action cannot properly be made final because of a deficiency in a current Office action.

In reading some of the comments, it appears that some nuances of a prosecution strategy might not be entirely clear.

A number of comments advocate resolving the issue by calling the Examiner to request a new Office action. This approach, they say, is cost-effective and obviates the need to advise the Office that finality is precluded.

I do not disagree that this approach should resolve the issue. I do, however, submit that in some circumstances the inclination to call the Examiner could squander what can be a significant tactical advantage.

Think about it. What might you do to rejected claims if you knew that the next Office Action could not properly be made final?

I believe that the best way to explore this issue is by an example. A significant number of the comments concerned what to do when the Office issues an Office action that fails to address a claim. Accordingly, I will use that example.

By way of review, this failure precludes the finality of a next Office action, if that Office action rejects the omitted claim. Also, in general, when the omitted claim is independent and/or of a significantly different scope/statutory class than substantively rejected claims, the omitted claim is less likely to be allowed in a next Office action.

When a next Office action cannot properly be made final if it rejects an omitted claim (and that omitted claim is not likely to be allowed on the next Office action), an Applicant has a rare opportunity to significantly amend the claims or even add new ones, without facing a final Office action in response. Also, the Applicant enjoys the advantage of modifying the presented claims based on the cited art, the Examiner?s application of that art, and the Examiner?s claim construction. Essentially, the Applicant gets ?a second bite at the apple? to submit claims that, like originally filed claims, must be examined as a matter of right.

The potential benefits are self-evident.

Secondly, in view of the production quotas Examiner?s must satisfy, this approach might (even if only marginally) help obtain an allowance, since counts are not awarded for successive non-final Office actions.

In sum, calling the Examiner may be the most cost-effective way to resolve a deficient Office action but, unless overall cost and/or a speedy allowance are top priorities, it may be advantageous to consider a substantive response to such an Office action.

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Full post as published by Patentablydefined.com on March 16, 2008 (boomark / email).