How to Be an Effective Advocate When Responding To Examiners

By Daniel Hanson
April 19, 2019

“Effective advocacy is not limited to legal documents filed in court or an administrative appeal…. The best way you can help the examiner is by getting to the point.”

https://depositphotos.com/39617791/stock-photo-law-concept-advocacy-on-computer.htmlYou’re a patent prosecutor. You’ve just received an office action. The examiner has rejected your claims. You think the examiner got it wrong. On the technical issues, it looks like the examiner is off base, pointing out elements in the prior art that aren’t really there, and finding motivation based upon the flimsiest bases. Also troubling is that the examiner has based some of the rejections upon rules or precedent that you think are incorrect, both on their face and as applied to your claims.

So, it’s time to prepare an office action response. Hopefully this will change the examiner’s mind and will allow your client to receive a patent. Your response may include some preliminary matters, perhaps some claim amendments and recitation of the prosecution history, and the status of various claims.

Then you come to the arguments. You want to argue with the examiner’s decisions, to be sure, but that does not mean that you want to be disagreeable.

Your job as an advocate is to help the examiner understand your client’s position.

There are numerous techniques you can apply in order to argue your case in a more effective manner. Effective advocacy is not limited to legal documents filed in court or an administrative appeal. Even when you are arguing to an examiner, your arguments can be made more effective by the manner in which those arguments are presented.

The Most Important Principle of Advocacy

Get to the point.

The best way you can help the examiner is by getting to the point. There are some examiners who, when reviewing written responses from patent practitioners, want an answer to this basic question: “If I messed up, can you please show me how, and tell me where, and explain why?”  Answering this question directly is what getting to the point is all about.

Getting to the point carries with it a host of corollaries, such as…

Be Direct Without Being Impolite

It is not discourteous to get to the point. Some patent practitioners think it is rude or brusque to get to the point too quickly. Consequently, they include a bit of language in their written responses to make it seem as though they do not wish to sound overly critical, nor do they want to offend the examiner.

Done properly, getting to the point is not offensive. It is not as though you are belittling the examiner’s intelligence or questioning the examiner’s parentage. Getting to the point is, rather, addressing the basic question that many examiners have. Just be courteous and professional while you get to the point.

Be Clear and Terse at First

Getting to the point requires you, as an advocate, to plainly state what the point is. In most cases, the basic point can be expressed as a short, simple sentence. There should be no doubt as to the position you and your client are taking on an issue.

The longer and more convoluted the point is, the more confusing it is. Generally speaking, you cannot persuade a person by confusing the person that you are trying to persuade.

Try to make a point as a single point. Sometimes advocates conflate disparate points into a single argument. It may happen, for example, that the examiner draws one conclusion that is erroneous for three different reasons. Or it may happen that there are there are multiple related—but nevertheless distinct—errors. In such cases, call out each of the points separately and clearly.

After Clearly Making the Point, Explain It

Make your point first, then explain it. The explanation should be clear, but the explanation may also be more detailed. The explanatory sentences may be longer. Citations to the record and legal authorities may be included. And, of course, the explanation should be crafted to support the point you want to make.

Don’t “Bury the Lede”

Getting to the point means that the examiner ought not to have to go looking for the point.

In the business of news journalism, there is a principle that the most basic elements of a story ought to be supplied first, followed by additional explanatory information or details. The first few lines of the story should encapsulate the basic thrust of the piece. When a reporter puts the details or explanatory material in the first paragraph, and puts the basic thrust in a later paragraph, that is called “burying the lede,” and it is regarded as bad form.

When being an advocate, make your point right away. If you “bury the lede,” that means the examiner will have to go hunting around for it, and there is a significant risk that the examiner may not find it or may not recognize it as the point you are trying to make.

Some advocates have been known to really “bury the lede,” by placing important points in footnotes. Points in footnotes are more likely to be overlooked or are more likely to be regarded as unimportant. If you have a point worth making, you should make it in the body of your argument. It is usually a good idea to avoid the use of footnotes altogether.

Some advocates have even been known to place the point at the very end of the argument, as though their arguments were a set of clues that in the end support the proper revealed conclusion. This may be a style appropriate for a mystery novel, but it is to be avoided in legal documents. You don’t want your arguments to be a mystery.

Use Good Headlines

The practice of journalistic techniques offers another helpful piece of advice for the advocate: write concise, helpful headlines to summarize your points.

A good headline is very, very terse. It rarely exceeds a single line. Some advocates are known to pack a lot of words into a headline, such as “The Examiner Erred And Failed To Meet The Burden Of Proof By Finding Anticipation Under Section 102, Specifically By Concluding That The Jones Reference Discloses Or Suggests An ‘Armature’ As Recited In Claim 1.”  A more terse version could be this:  “Jones Does Not Disclose An ‘Armature.'”

Good headlines serve a number of purposes. First, they help you get to the point by encapsulating what you want to say. (I am speaking here of the “old school” form of headlines, not the “teaser” or “clickbait” headlines that do the opposite and have emerged in the Internet Age. Do not write anything like: “Seven Reasons the Examiner Erred:  Number Three Will Shock You!”)

A second benefit of good headlines is that they show how the arguments work together. To illustrate, there may be instances in which several arguments are related, and the examiner can easily see how they are related just by reading the headlines. One main argument may be, for example, “1. Jones does not disclose all elements of claim 1.”  Under this point may be sub-points with their own headlines, such as “a. Jones does not disclose an ‘armature'” and “b. Jones does not disclose an ‘armature spring.'”

A third benefit of good headlines is that the examiner can get a good idea about your position at a glance. Just by reading the headlines, the examiner can see where you are coming from. The Examiner is more likely to address your arguments properly, and is less likely to overlook some of your points.

Organize Your Arguments

Your arguments ought to be laid out clearly and effectively. What constitutes a clear and effective layout varies from case to case.

Sometimes arguments can be organized so that they mirror the examiner’s office action. This can help the examiner by explaining what arguments apply to which rejections.

As a general rule, it can be helpful to argue the more sweeping points affecting many claims first, and argue the more specific points applicable to individual claims later.

In many cases, the arguments about legal errors can be developed after the technical arguments, as many examiners are more attentive to technical points and are less likely to be persuaded by legal arguments. Important legal arguments, even if they are unlikely to be persuasive to the examiner, nevertheless ought to be made to the examiner. In the event of an appeal, you want it to be clear that the legal error was preserved for review, and that you are not trying to reverse the examiner on a ground that could have been—but was not—presented to the examiner.

There may be situations in which mirroring the examiner’s office action is not the best course. Perhaps the examiner’s entire office action is flawed for reasons not mentioned by the examiner at all. A key cited reference might not be prior art, for example. In such cases, you may urge arguments that have no corresponding point in the office action.

Avoid having distinct arguments being disjointed or conflated or otherwise arranged in a confusing fashion.

Argue in The Alternative

Often a claim rejection is thought to be erroneous for several distinct reasons. It can be strategically advantageous to argue in the alternative that there are, say, five distinct reasons why a particular action is in error, and reversal is in order if any of the five reasons is valid. Put another way, you only need to be right on one point to reverse a rejection; the examiner has to be right on all five points in order to maintain that rejection.

When arguing in the alternative, make it clear that is what you are doing. Otherwise, it might not be clear to the examiner that prevailing upon any single one of your points is sufficient to require a reversal.

Use Plain Language

In patent prosecution, many technical and legal issues are difficult enough on their own. Do not make them more difficult by using obscure language or by tossing around Latin terms or by arguing hyperbolically. Your job as an advocate is not to overwhelm the examiner or confuse the examiner or browbeat the examiner, but to help the examiner.

Some Benefits of Good Advocacy Before Examiners

You will be helping the examiner, of course.

You will also be helping any reviewing bodies, which may include the Patent Trial and Appeal Board (PTAB), juries, and trial or appellate judges.

You will be helping your client. Many clients appreciate it when their counsel sends them understandable documents that lay out arguments in a straightforward and easy-to-follow fashion.

And you will be helping yourself. You will be helping yourself to better understand your own case, but you will also be helping yourself in other ways. If you make a Response and Argument, step away from it, and then return to it after a few months, you will be able very quickly to refresh your recollection of your arguments. You can also determine relatively quickly whether the examiner has responded to your arguments completely and appropriately.

If it becomes necessary to file a document for review, such as an appeal brief or a pre-appeal, your clarity and organization before the examiner will prove immeasurably valuable. You can more quickly identify your strongest arguments and your bases for review. In the case of a pre-appeal, where you are required to supply a “succinct, concise and focused set of arguments” and there is a strict page limit (see MPEP § 1204.02), the short and to-the-point arguments made to the examiner will help you make your case more easily in the allowable space.

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Copyright: maxkabakov
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The Author

Daniel Hanson

Daniel Hanson is an attorney who has worked with a number of law firms and corporations, including BlackBerry Ltd. in Canada. His practice focuses upon patent preparation and prosecution.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 10 Comments comments. Join the discussion.

  1. Concerned April 19, 2019 1:20 pm

    Considering my examiner only approved 2 applications out of 114 during a 12 month period, no amount of dipomacy seems adequate. It appeared the higher ups were making the rejection as the examiner said 3 times in a telephone interview that he saw patentability.

    My attorney did maintain his professionalism and he was cordial to no avail. The examiner was also professional.

    I prefer truth, facts, logic and a s101 with no added text by judges to win the day in a legal setting, not mutual butt kissing.

  2. Anon April 19, 2019 4:40 pm

    Decorum is always required in actual dealings with the Office (which is important to note, that the advice and discussions on forums such as this one do NOT have that requirement).

    That being said, the Patent Office is simply KNOWN to not always operate on the “up and up.”

    Think “SAWS” for starters (and the fact that the Office ‘slipped up’ in their initial defense of the program by stating publicly that SAWS was but one of many such programs hidden in the shadows).

    While many of the points in this article are excellent, one should not shy away from being “brutal” if that being brutal is in fact in accord with the law. While examiners (especially lower level ones) will adhere strictly to some of the interpretation in the MPEP, it does not hurt to use the Office’s own “weasel words” about how actual case law (and not the MPEP) must be applied – especially in those instances in which the MPEP does not properly “interpret” the actual case law.

    And as Concerned notes here (and many others have noted – including some of the sponsors of IPWatchdog), not all examiners are created equal and some simply will not follow the law and allow applications that should be allowed under the law.

    I have two cases now in which the examiner has been notified that the lack of responsiveness is bridging on bringing in the Patent Office Ombudsman.

    I suspect that since there is a NEW POPA agreement (and one that places greater weight on complaints with merit from ‘customers’), that being tough in those situations in which such are called for will bring results.

  3. step back April 19, 2019 7:29 pm

    Anon @2

    being tough in those situations in which such are called for will bring results.

    Good luck with that fantasy.
    There are cases where no amount of courtesy or toughness or anything will get you positive results once some higher up (SPE or higher) has made up their mind (for whatever reason) that you or your client is on the black list.

    With that said, I think this article makes some good points about advocacy when dealing with honest, sticking-to-rules examiners and SPEs.

  4. Anon April 19, 2019 9:41 pm

    step back – point taken in that one cannot win them all (and often turns to the sad fact that clients just do not have unlimited funds to overcome the roadblocks).

  5. Josh Malone April 20, 2019 8:33 pm

    Don’t forget to inform the client the patent does not give them the right to stop a big corporation from stealing their invention and their patent can be unilaterally revoked by the USPTO at any time.

  6. Anon April 20, 2019 11:09 pm

    Fair points, Mr. Malone.

    Informed consent does include the denigration that has occurred to the (once Private) personal property that is now a Public Franchise property.

    Additionally, the vector for Trade Secrets is tending in the opposite direction.

  7. PTO-Indentured April 21, 2019 10:16 am

    Advise clients ‘Manifest Destiny’ is back: now its intellectual property theft

    The efficient infringers rationale: ‘Across the entire U.S., we rob an entire class of people of their property and means of livliehood (U.S. individual inventor) because — fortified by the U.S. government — we can. Besides…anyone can see we were destined to prevail, because the powers backing us (exclusively) obviously make nearly all of ‘their like’ (individual inventors) utterly defenseless.’

    Anon@2 — Thank you for putting the subject of SAWS back on the table. Anyone in the IP community who has not accessed the SAWS documentation (via FOIA access at USPTO.gov) will feel, where U.S. patent prosecution is concerned, they have had their head buried in the sand. The .PDF reveals a horrible (intentionally kept secret) phase in U.S. invention stewardship run amok — perpetuated by the highest levels of PTO decision makers. Not surprisingly, this lowest-bar phase of patent fate arbitrariness and prosecution stone-walling led right up to AIA. An objective reader will find in the SAWS PDF there was prevailing timidity of leadership — antithetical to the American spirit of inventiveness so often requiring, to the contrary, fearlessness and tenacity — wherein unbelievably (and literally) “Don’t do anything that might embarass us” — “and report any and all of such ‘even if it remotely might do so’ privately to us” became a top-priority operating principles.

    Where does this legacy of SAWS and AIA leave us today? What do they ‘Manifest’?

    It makes the PTO’s offerings to an individual American inventor today, appear much like — and not worth much more than — a so-called ‘Invention Marketing’ company practice: holding up with one hand the promise of the innovator’s invention, charging significant if not substantial fees alleged essential for the invention’s monetization, wherein despite all of the inventor’s time, risk and investment there is (on the other hand) little or no path to an effective follow-through. The patent itself and/or the alleged ‘invention marketing’ — in the eyes of an U.S. empowered efficient infringer remain meaningless. The PTO knows this, Congress knows this, and the U.S. courts at all levels, know this. It could not have been made manifest without each turning a deaf ear to the U.S. individual inventor.

    All of which outsources a proven (former) major potential source of U.S. wealth, innovation, jobs and legitimate U.S. pride, to any other country but the U.S. — for FREE. As to efficient infringers in the U.S. stealing the intellectual property? Call it: ‘manifest destiny’ revisited.

  8. Javier April 22, 2019 4:22 am

    I just agree with the clarity and order of the arguments. Otherwise I think the article misses the point.

    The focus shoudn’t be on the arguments of the examiner, as they are just simply plain fundaments (better or worse) for an opinion about the aparent unfulfillment of one or more legal requirements.

    The question should be how the claims and the application fulfills the legal requirements it belongs for a grant. The question should be why, not just the examiner, nor the patent office, but the entire society should grant an exclusive right to that applicant because it clearly fulfills all requirements and therefore contribution to the society is balanced with propietary right.

    The mere fact that an examiner’s argument is flimsy or even false, does not imply that the opposite is valid, does not confer validity by negative counterargument. This is the key question.

    It should be proven that the validity is properly fundamented in a possitive opinion with a reasonable degree of certainty for third parties.

  9. Anon April 22, 2019 10:39 am

    Javier,

    I trust that you are not familiar with the actual burdens under patent law, as your comment would place the burden squarely on the wrong party.

    Your question is clear, but it is clearly not in sync with the law as written (and as has been written for a very, very long time).

  10. Zamal June 11, 2019 8:50 am

    Thanks for the suggestions. I think it would be helpful to advocates when writing responses next time. Thanks again!

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