What is a patent Examiner’s Amendment?

I love Examiner’s Amendments. Not only is the patent examiner willing to allow a patent application, the examiner is taking the initiative to amend the application in order to issue a Notice of Allowance. Agreeing to an Examiner’s Amendment is more expeditious than filing your own amendment because you save the time otherwise required for the Examiner to review your amendment [see MPEP 1302.04].

Examiner’s Amendments are typically suggested after the applicant responds to an Office Action. In such scenarios, the applicant’s claim amendments may have addressed certain issues in a prior Office Action but may still require a bit more to overcome any remaining objections.

Should you agree to the Examiner’s Amendment?

So if Examiner’s Amendments are so great, why would an applicant ever not agree to them? One possible reason could be that the proposed claim amendments are too narrowing to the point where the applicant does not sense sufficient value from a patent granted on such claims.

It is true that applicants always have the option to file continuations prior to grant. Even so, an applicant may face the difficult decision of disagreeing with a proposed amendment in order to fight for broader claims in the pending application.

In most cases, the amended claims suggested by the Examiner will usually provide the IP owner with sufficient value to justify an earlier allowance. If the applicant is about to launch product or secure financing, significant advantages may result by moving from “patent-pending” to “patented.” If patent-pending product has already been sold, the IP owner can sooner switch to patented and mark its products with the patent number.

What are your options if you disagree with the proposed Examiner’s Amendment?

It’s always wise to be gracious to patent examiners, especially those who are trying to help get an application allowed. So even if you disagree with a proposed Examiner’s Amendment, proceed tactfully by proposing any further amendments or arguments in a respectful manner. The last thing you want is to turn the examiner against you.

Before filing a written response, however, it may be worthwhile to have your patent representative talk to the Examiner again to discuss your desired claims. Perhaps, the Examiner may be convinced to allow broader claims than originally proposed.

If the Examiner is willing to compromise on claim amendments that don’t exactly meet your ideal scope, but still exceed the scope of previously proposed claims, it may be best to agree to an Examiner’s Amendment on such middle ground. You can then file a continuation to seek broader claims.

Next steps after Notice of Allowability

It’s not easy getting a utility patent application allowed, so a little celebration is certainly warranted. But, don’t rest on your laurels. Savvy patent owners know that competitors will seek ways to design around patent claims.

It’s never too early to start thinking about how competitors might eliminate one or more features of each independent claim in your soon-to-be granted patent. In fact, it’s possible that your competitors are tracking the status of your allowed application and already thinking of design-arounds.

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Vic Lin

Vic Lin

Startup Patent Attorney | IP Chair at Innovation Capital Law Group
We love working with startups and small businesses. I help entrepreneurs protect their intellectual property so they can reach their business goals.