Receiving a call from an Examiner willing to propose a Examiner’s amendment is, personally, my favorite call to receive from the United States Patent and Trademark Office (USPTO). An examiner’s amendment can appear to be the light at the end of the tunnel. The examiner is now on [apparently] your side, trying to get your patent claims in condition for allowance. If accepted, the Examiner’s Amendment will likely result in a Notice of Allowance. Yet, unfortunately, not all examiner’s amendments should be accepted and, depending on what the amendments do to the overall integrity of your patent claims, may not lead your claims in a desirable direction.
What is an Examiner’s Amendment?
Examiner’s amendments are governed by MPEP § 714(E). The majority of examiner’s amendments are what is known as a Formal Examiner’s Amendment. An Informal Examiner’s Amendment exists, but is limited to paper only applications with a limited number of circumstances that allow this.
This article will focus on Formal Examiner’s Amendments.
A formal examiner’s amendment may be used to correct for any of the following:
1. Informalities in the written portions of the specification,
2. Errors and omissions in the claims, and
3. Claim amendments.
Points one (1) and two (2) are relatively straightforward and deference should be given to the examiner, as they are cleaning up your errors. However, point three (3) can be tricky.
Typically, examiner claim amendments are proposed by the examiner to move the patent application to allowance. This can appear to be great news, but can have undesired consequences depending on the scope of the amendment. If, for example, the proposed amendment narrows the claims passed what you or the Applicant think is reasonable, you may not want the proposed claims despite a near guarantee of allowance. Further, if the proposed amendment changes or excludes the core of the invention, the granted patent may be useless to enforce your product.
How to Approach a Proposed Examiner’s Amendment
As a general rule, when an examiner’s amendment is proposed, do not accept or reject before understanding the proposal and consequences of the proposition. Further, you do not want there to be a record of you accepting something that an examiner, or any adverse party down the line, can later hold you to.
Keep in mind the following as you go through the amendment process:
- Ensure the amendment is supported in the specification
- Check that the amendment lines up with the product and/or market the inventor is pursuing
- Review dependent claims to verify that they are corrected – Examiner’s can sometimes overlook this
- Take your time! The examiner will be rushing – but you don’t have to. Ultimately, the examiner may suggest the amendment in a formal office action – and you can adopt it there anyway.
An examiner interview, formal or informal, allows for you to gain a bearing of where they stand, what their thought process is behind the proposal, and what they are willing to allow. Talking it out with the examiner also gives you invaluable insight if you ultimately choose to decline the amendment.
When I come to something that might work for my clients, I offer the examiner a courtesy by proposing to draft the Examiner’s Amendment for his review and approval. Having the ability to draft the amendment gives me control of the language and can allow for some maneuvering within the confines of the agreement I reach with the Examiner and my client.
Further, drafting the amendment yourself demonstrates respect to the examiner and takes work off their hands, which may gain favor with the examiner in what they will allow.
Make sure you don’t sign any proposal, and that you keep it marked as draft! That way, if your version of the amendment is declined, it stays on record as only a draft.
If you cannot come to an agreement…
Be sure to remain respectful to the examiner, as he holds the power to grant allowance. Having an examiner become hostile because of the mismanagement of this opportunity is a worst-case scenario for an applicant in this position. Not only could you not come to an agreement, but you now turned an examiner willing to help into an adversarial relationship.
Sometimes, it may be a good idea to meet in the middle and concede claims you do not necessarily agree with to establish a base of allowable claims. “Better is the enemy of good.” Consider accepting a ‘decent’ amendment, and pursue additional rights in a continuation (link to continuation article). If this is the route you choose, you can use the continuation to attempt to broaden or modify the allowable claims.
Most of the time, examiner’s amendments are good news for you and your client, but there are some pitfalls to be aware of, and navigate with caution. Utilizing this information will hopefully bring you one step closer to allowance.
Lastly, I’ve found that even when I decline the Examiner’s Amendment – the subsequently issued office action I receive usually includes an Examiner’s proposal buried in one of pages.
If you are interested in more information related to your situation it is best to speak with an attorney.
Dated November 2, 2020
Yuri Eliezer and Robert Wiesenberg