The Dynamics of Patentability Beyond §§ 102 and 103

Skeptical boss.Two sections of the Patent Act are acknowledged as the significant gates to patentability in the United States.  Among those, § 102 is a barrier against an invention that lacks novelty, and § 103 presents an additional caveat for any invention which, surviving § 102, is obvious to one having ordinary skill in the art.  So, patent practitioners obsess over the hurdles of §§ 102 and 103.

But there are other factors that have a significant bearing on patentability.  The U.S. Patent Office relies upon an examining corps of thousands of patent examiners.  Many of those have no or only partial signatory authority, meaning that they are not senior enough to allow the applications they examine.  Instead, those junior examiners discuss their applications with supervisory and primary examiners, and those more senior examiners have the authority to grant applications to patents.

Despite lacking a separate section in the Patent Act, it’s the personal relationships and dynamics between those junior and senior examiners where the final, hidden gate to patentability stands.  Between them, the junior examiners perform the heavy lifting of searching the prior art and preparing the official actions, and the more senior examiners carry the burden of signing those official actions and allowing applications to grant.

The senior examiners are called upon to make decisions on patent applications without having the same level of familiarity with those applications or the prior art as the junior examiners have.  Starting from that lack of familiarity, a senior examiner’s level of scrutiny is particularly heightened when a junior examiner presents a “pitch” for the allowability of an application.  Those discussions occur off the record, and patent practitioners have little, if any, exposure to them.  Patent practitioners generally fail to anticipate or foresee the types of problems that arise during those interactions.

Of course it’s necessary for practitioners to draft claims including novel and non-obvious claim elements, but it’s just as important to provide junior examiners with a clear vision of the merits of the case.  That vision should be easy to articulate and able to withstand the heightened levels of a senior examiner’s scrutiny in all aspects of practice, including claim comprehensibility and consistency.

The dynamics between junior and senior examiners are not that different from those that exist between co-workers in other everyday-life interactions.  Again, senior examiners are asked to grant patents without having the same level of familiarity with the prior art, claims, specification, or drawings that the junior examiners have.  Thus, a measure of trust is relied upon, and a junior examiner’s credibility becomes a factor under consideration by the senior examiner.  It can be damaging to that credibility for a senior examiner to review a claim listing only to find claims that fail to align with the drawings or written description, are confusing or in awkward form, include problems with antecedent basis or definiteness, or include other informalities.  If the vision for the case begins to break down, a senior examiner may proceed to look for even the slightest flaw or inconsistency to avoid making a decision with limited time, regardless of whether or not the hurdles of §§ 102 and 103 have been surpassed.  Even relatively minor informalities in dependent claims can derail discussions between junior and senior examiners.

To be effective, patent practitioners can do more than narrowly obsess over a single novel and non-obvious element in the claims.  They can look at the “big picture” of the claimed invention, confirm that every element of every claim (including dependent claims) is clear, and review those claim elements for consistency with the specification and drawings.  On that foundation, patent practitioners can provide junior examiners with an “elevator pitch” for allowability.  They can arm junior examiners with technically clear and concise arguments that are fast to recount and express.  Drawn out, convoluted arguments should be avoided, and the effort to dissolve arguments to a manageable level should be a driving factor in how the claims are amended.

To go further, patent practitioners can use examiner interviews as an opportunity to teach junior examiners how to present the “pitch” for allowance.  Ideally, the discussion can revolve around the vision of the case presented in the claims, how that vision can be identified easily in the drawings (and written paragraphs by inference), and the technically clear and concise points of distinction between the claims and prior art.  The overall aim is to foster the junior examiner’s ability to quickly present the merits of the case with senior examiners.  It’s when those arguments are effectively expressed, understood, and passed from practitioner, to junior examiner, to senior examiner – along with the absence of questionable informalities in the record – that applicants have the greatest success.


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Join the Discussion

3 comments so far.

  • [Avatar for Anon]
    August 18, 2016 05:05 pm

    Dynamics…? Yes
    Patentability…? Most definitely not.

  • [Avatar for KenF]
    August 18, 2016 11:58 am

    Totally concur.
    This is also why I ask for a supervising examiner to be present when I interview a case with a junior examiner. I want to make sure the senior understands the case as fully as the junior (purportedly) understands the case or, if the junior clearly does not, to talk to the person making the ultimate decisions.

  • [Avatar for Richard Allen]
    Richard Allen
    August 17, 2016 08:24 pm

    Great insight, Jason!