Why is persuasion necessary?
If you’re going to be an IP attorney, you must be able to persuade. There is no way around it. Whether you’re focused on IP litigation or prosecution, the skill of persuasion is critical. Here’s the problem. Persuasion involves people skills and a proper balance of listening and speaking. When it comes to patent rejections, you need to know when to be quiet and listen. And there will be nothing to listen to if you don’t contact the patent examiner. This is where it gets challenging for left-brained, engineer-trained lawyers. We would rather argue our points in writing than listen to what an examiner has to say.
Good technical skills are required, but not sufficient. There may be a particular issue on which the examiner is fixated, an issue that you might not have adequately addressed. To persuade someone in authority to change their mind, you have to recognize and address the human element. You’re not talking to an emotionless machine.
How to persuade patent examiners: Ask questions and listen carefully
An examiner interview may typically begin with us identifying certain novel features in the invention and showing how the claims, whether original or amended, adequately recite these features. One pet peeve of patent examiners is when the practitioner points out any allegedly unique features which are not covered in the claims. We may then walk through the cited prior art references to explain how such claim limitations are not shown or suggested in the prior art. The key is to be respectful and clear in communicating these points.
I have found that patent examiners who tend to more quiet or rigid during an initial stage of the conversation may open up more in response to questions. I say “conversation” on purpose because you do not want the interview to devolve into an argument. Again, remember the human element and the adage that you attract more bees with honey than with vinegar.
For example, if our proposed claim amendments still do not convince the examiner to withdraw a particular rejection, we might say something to this effect: “What if we were to amend Claim 1 to add XYZ, would such an amendment at least get us past Reference 1?” If the Examiner is still not convinced, a tactful follow-up question might be: “Would there be alternative language covering features (XYZ) that you think would be more effective at distinguishing Reference 1?
Notice that the examiner is not being asked to come up with new claim limitations for you. Instead, you are trying to come up with tighter language to capture the unique features which the examiner hopefully agrees are not disclosed in the prior art. At times, this will require you to think quickly on your feet so that you can either propose different language or frame the question in such a way that invites the examiner’s feedback. The goal is to establish a more cooperative environment where the two of you are collaborating to define the key features more tightly to overcome the cited prior art references.
How to persuade trademark examining attorneys
Trademark applications may not offer as much flexibility as patent applications in terms of amendments. Whereas amendments are the norm in patent applications, a typical trademark application might not provide much room for negotiation. One reason for this is that the initial identification of goods and services should follow the pre-approved Trademark ID Manual. If done correctly at the initial filing, then there will not be much to amend in the identification other than to delete certain items.
Trademark Office Action responses tend to contain more legal arguments whereas patent responses contain more technical arguments. Legal precedents play a bigger role in overcoming trademark rejections. It certainly helps if you can find a case on point, but beware of the common refrain by trademark examining attorney: every case must be examined on its own merits. While this may sound like an excuse to avoid abiding by any precedent, the key is to figure out what may be done to get the examining attorney to a point of agreement.
If arguments fail, consider alternative options such as a consent agreement if it makes sense. In doing so, you are shifting the target of persuasion from the examining attorney to the owner of the cited trademark. Another option might be a TTAB filing against the cited mark.
How to persuade a team
Keep in mind that examiners and examining attorneys may have to report to supervisors. Even if an examiner felt that your case was allowable, there may be other obstacles for that examiner to overcome. There may be times when you will want to have the examining team on a call, or at least find out if there is a way for you to address those obstacles to the satisfaction of the higher-up folks.