What is a Patent Examiner’s Amendment?

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 get it allowed. 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 has responded to an Office Action. In many cases, the applicant’s claim amendments may have addressed certain substantive issues raised in a prior Office Action, but the examiner requires a bit more to overcome any remaining objections. For example, it is common for an Examiner’s Amendment to resolve indefinite claim language.

Should you agree to the Examiner’s Amendment?

So if Examiner’s Amendments are so great, why would applicants ever disagree? One possible reason may be that the proposed claim amendments are too narrow. If the proposed amendments would narrow the claims to the point where they no longer cover the applicant’s product or a competitor’s product, the applicant might not see sufficient value in 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 Allowance

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. Before paying the issue fee, consider a continuation application with a placeholder claim to reserve your rights to pursue additional claims.

Having trouble with patent rejections?

Reach out to US patent attorney Vic Lin by email or call (949) 223-9623 to see how we can help respond to an Office Action and work with you to get some claims allowed.

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Frenda Williams
Frenda Williams
2023-02-21
I have had the pleasure of working with Vic and his team at Innovation Capital Law Group on Trademark creation and contracts. As a solo and non-tech founder, the assistance, guidance and recommendations from Vic and his team have been INVALUABLE. And, with the knowledge that I have a Solid, well versed and caring legal team I can turn to, I have the confidence I need to navigate the intricacies of the tech industry as a solo founder. With that being said, If you’re a startup and you’re looking for a legal team that speaks your language, knows the industry and makes you feel like family…. Innovation Capital Law Group is a Perfect fit for you, your company and your team. Five out of Five Stars… don’t let their brilliance blind you 😁
Shiwei Liu
Shiwei Liu
2023-02-20
Excellent service and quick response. Lots of informative documents on its website.
Chang Chien Michael
Chang Chien Michael
2023-02-20
I have worked with iCap for more than 7 years. I am very glad with his professional knowledge that 7 utility patents were granted by USPTO. Vic and his team are very efficient and knowledgeable. Every time he can transcribe my design idea perfectly in two weeks and file it with no rejection from USPTO. The other service including the granted patent following up is always in time to remind me to take actions. That is why I still stick on iCap as my first priority when I want to file a US patent.
Mats Johansson
Mats Johansson
2023-02-20
We have been happy client for 10+ years. Awesome Patent Law Firm!
Hanson Chang
Hanson Chang
2023-02-16
Glad to write a review for Innovation Capital Law Group. We previously worked with a big law firm (2200 employees) on our patents, and decided to shift over to Innovation Capital. It was a great decision, this team got our patents done faster, more effectively, at a lower cost, and with broader claims. Win all around
Genevieve Springer
Genevieve Springer
2022-09-09
Clear, discernible tools and strategies couched within a business conceived from a genuine interest in doing right by founders.
InPlay Inc
InPlay Inc
2022-06-30
Vic and his team have been providing us with the best patent application experiences we could ever have in our entire career life! Their professionalism and technical knowledge have really saved us a lot of communication effort and time on the applications. Definitely highly recommend if anyone is looking for help with IP protection for their business.
Meg Crowley
Meg Crowley
2022-03-05
After working with Vic and his team at Innovation Capital Law Group, our organization is confident our trademarks were solid and protected. Thank you team.
Andy Dong
Andy Dong
2022-02-28
I have been using Innovation Capital Law Group for a few years and continue to use them. They have provided an excellent services on our legal issues including intellectual properties and patents . They are very responsive, easy to work with and very competent . I highly recommend them.

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