What are the top losing patent arguments?
About 9 out of 10 utility patent applications will receive at least one rejection. Getting a utility patent, therefore, will require skill in overcoming these inevitable rejections from the examiner. One way of improving your probability of success is to avoid loser patent arguments. Let’s discuss some of the more common ineffective ways to respond to patent Office Actions.
Need to prevail over a patent rejection? Contact US patent attorney Vic Lin at (949) 223-9623 or email vlin@icaplaw.com to explore how we can help you get your patent granted.
Loser Patent Response #1: Arguing About Features Not Claimed
Examiners must get this quite frequently. In response to an Office Action, an applicant goes into great detail about how their invention is different from the cited prior art references. There is only one problem. These supposedly distinguishable features are not recited in the claims.
If it is not in the claim, arguing about it will not help. An Office Action response provides you with the opportunity to amend your claims. Make sure your distinguishable features are claimed. Then argue about how those claimed features are not in the prior art.
Loser Patent Response #2: Claiming Features Not Disclosed
I have written about the irreversible harm caused by filing cheap patent applications. A scant specification provides you with fewer options to amend your claims. In particular, you cannot claim any features that are unsupported by your patent specification.
For example, suppose your original independent claim covered a product having three features ABC. The patent examiner has rejected your claim on the grounds that ABC is already known in the prior art. You now wish to amend your claim to ABCD. In other words, you now wish to cover a fourth feature, D.
Here is the issue. Does your specification provide adequate disclosure of feature D? If not, you cannot claim it. You can try, but you may get a Section 101 rejection for claiming something not disclosed in your specification.
So what is the solution? The only way to add new subject matter is to file a CIP application. Keep in mind, however, that the new content will get a later filing date. As a result, potentially more prior art may be cited against your CIP claims that recite new features.
Loser Patent Response #3: Arguing as if the Examiner were not the Judge
When non-lawyers think about attorneys and cases, they might conjure up an image of a lawyer trying to persuade a judge. Patent prosecution is unique in that your adversary, the patent examiner, is also the judge. And they will remain the judge of your patent application unless and until you appeal to the Board.
Your arguments, therefore, need to be persuasive and delicate. You are dealing with a human being, not a machine where you can simply feed it input and expect a certain output. Human psychology is always a factor in responding to patent rejections. Your arguments may be more compelling if accompanied by claim amendments where you make certain compromises. In my experience, an Office Action response consisting solely of arguments without claim amendments will likely lead to further rejections.
Loser Patent Arguments after Repeated Rejections: Not Talking to the Examiner
The strength of your patent arguments does not merely lie in written words. If you have received repeated rejections, consider having your patent attorney talk to the examiner. Your patent attorney should be the one to suggest and initiate an Examiner Interview.
Talking to the examiner can often accomplish so much more than written arguments. Your patent attorney can present potential claim amendments and arguments, and see how the Examiner will react to such proposals. Depending upon the communication skills of your patent attorney, the Examiner may even recommend certain claim amendments to overcome the cited prior art references.
Recognize that a successful examiner interview results in the present rejections being withdrawn, but success does not always mean that an allowance will be next. Examiners will typically reserve the right to search further prior art after receiving your written response with amended claims.
Need winning patent arguments?
Overcoming patent rejections takes strategy, and winning strategies come from experience. Contact US patent attorney Vic Lin at (949) 223-9623 or email vlin@icaplaw.com to see how we can put winning strategies to work for you.
