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.