A post from student blogger Brittany
When learning about correspondence with the PTO, it is very easy to deduce that the Examiner is always in the driver’s seat and the patent practitioner should do anything possible to please him or her in order to get an allowance. There are a few cases however in which the patent practitioner can shift that control, putting the Examiner in the hot seat. For example, when an Examiner rejects claims based on 35 U.S.C103 or requires a restriction/election, it is their responsibility to provide sufficient evidence to support their conclusion, and when they don’t, the patent practitioner can respectfully call them out.
I recently got a homework assignment back from my Patent Prosecution professor and he stated that although I knew I could argue that the Examiner failed to explain his stance on a serious burden, I didn’t have a convincing argument. The professor also stated that it takes a certain level of skill to eloquently disagree with the Examiner resulting in him or her potentially having a change of heart regarding their initial rejection.
The idea of arguing my point, when I know I am correct, reaches further than my future interactions with the USPTO and outside the classroom. People are going to tell you no all the time because to be perfectly honest it’s an easy way out of a lot of situations, however if you really want something it’s your responsibility to persuade them otherwise. Have a great counterargument that makes someone question their initial thought process, simply saying you’re wrong just won’t cut it. Now don’t get me wrong, some people will tell you no and you’ll know immediately that they mean it, we can’t win them all, but for the ones that you have the slightest chance of coming out as the victor why not nudge them a little.
As I write this post I am heading to Louisville to compete in the Cardinal Challenge. Each team has the burden to convince the judges, whose favorite word is NO, that they have a solid business plan and can combat any questions thrown their way. I hope I can let you guys know that we won on my next post, but if I don’t then you should already know that we didn’t present a convincing argument.