Five Common Mistakes of Patent Prosecution from the Enforcement Perspective (Part 5)

Mistake #5: Lack of Communication with the Examiner

We observed that sometimes applicants do not proactively communicate with the examiner. Again, this is not really a mistake, but a less than ideal common practice.

Examples
• Applicant realizes that the Examiner appears to have misunderstood a complex aspect of the invention, and traverses in the response to the office action. The Examiner issues the final office action with the same misunderstanding. Applicant traverses again in another response.

Consequence
• Prolonged Examination.
• Potential Prosecution History Estoppel.

Case Study

In Hormone Research Foundation, Inc. v. Genentech, Inc., 904 F.2d 1558 (Fed. Cir. 1990), the Court held:
• Prosecution history estoppel can limit the coverage of an inventor’s claims.
• Official correspondence with the examiner may be used to limit the patentee’s claims.
• “Depending on nature of purpose of amendment, it may have limiting effect with inspector ranging from great to small to zero.”

Therefore, communicating with the Examiner proactively may reduce paper trail and avoid unnecessary delays. Based on our experience, the examiners are generally professional and cordial, and also want to move the prosecution forward.

Solution
• Proactively communicate with the examiner via telephone or in person interviews.
• Work with the examiner after an office action to expedite the prosecution and save costs by avoiding unnecessary delays and, after the final office action, pursuing the possibility of an Examiner’s Amendment.

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