What should you ask for in a second opinion?

So you have a nagging feeling that something is not right with your pending patent application, but you are not sure what it might be or how to even find out. The point of this post is provide some helpful guidelines on what questions to ask if you’re thinking of seeking a second opinion on your patent application.

Don’t judge a patent attorney by the patent examiner

Utility patent applications get rejected so often that it’s actually quite rare for a utility patent application to get allowed on the first try (aka “First Action Allowance” in patent vernacular). Furthermore, a First Action Allowance is not always a good sign because your original claims might be too narrow.

Utility patent claims may be rejected for a variety of reasons unrelated to the quality of your patent application, such as:

  • the examiner does not accurately understand your invention
  • the examiner does not accurately characterize the prior art
  • several different pieces of prior art are being combined to form an obviousness rejection
  • a decision was made to forego a patentability search prior to filing the non-provisional application

So, when would it be reasonable to consider a second opinion? The following are factors that may warrant speaking to a different patent attorney or agent.

Were arguments against prior art rejections made on what was claimed?

It is common for an applicant to argue that certain features of their invention are not shown in the prior art. That is a valid argument only if those features are recited in the claims. It would be worthwhile to check that certain key features of the invention are clearly stated in the claims.

Is your invention adequately described in the specification and illustrated in the figures?

You cannot claim what is not disclosed in your application. So, if you’re going to claim particular key features of your invention that are not shown in the prior art, your application must adequately disclose those features. Otherwise, the examiner will hit you with a Section 101 rejection for introducing new matter unsupported by the specification.

If you have received a Section 101 rejection for introducing new matter, consider a continuation-in-part (CIP) application to add the new subject matter. To be fair to your current patent attorney/agent, the new matter might not be their fault if those details were not clearly presented during the initial drafting of your patent application.

Was a patentability search considered prior to your patent filing?

There are strategic reasons for avoiding a patentability search as well as for conducting one. Just because a novelty search was skipped prior to filing is not a sufficient reason for switching your patent attorney. The question is whether you and your patent professional discussed a patent search and made an informed decision on whether or not to pursue it.

Has your patent attorney spoken to the examiner?

Not every Office Action warrants an examiner interview. This is particularly true during the earlier stages of prosecution where a first or second Office Action has been issued. However, if you get to a third Office Action or more, the timing may be ripe for a friendly conversation with the examiner to discuss how your claimed invention is not taught or suggested by the prior art.

A productive examiner interview can provide helpful guidance on which claim limitations and associated arguments may work to overcome certain prior art rejections.

Share your concerns with your patent attorney / agent

In my opinion, the fair thing to do is express your concerns to your current attorney/agent and give them a chance to share their thoughts on next steps. You can’t change the past, but you can focus on improvements in the future to get your patent application approved.

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Vic Lin

Vic Lin

Startup Patent Attorney | IP Lead Partner at Innovation Capital Law Group
If you are a startup or small business, we want to help. Our mission is to equip entrepreneurs with solid IP rights that facilitate funding, growth and sales. Let's get to work! Direct: 949.223.9623 | Email: vlin@icaplaw.com
Vic Lin

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