I received an interesting Office Action today, and what made it noteworthy is that in all my years of practice before the Patent Office I have never received an invitation to come to the Patent Office to meet with the Examiner for the purpose of resolving issues presented in the Office Action “in an efficient and prompt manner.” I’m still having trouble processing and reconciling such unexpected collegiality. Over the past ten years I’ve grown accustomed to dealing with an examining corps that has been something less than receptive to the inventiveness of the methods and machines described in the applications I submitted, especially for applications describing relatively simple mechanical devices. Could this be a refreshing new attitude by the Patent Office? I hope so.
No patent attorney wants to have an application allowed and a patent issue for an invention that fails to meet the requirements of patentability, which are simply that an invention be new, useful and unobvious. Aside from being unethical and wrong, there’s just no point in it. But. all too often, especially over the preceding ten years, many patent practitioners have encountered examiners, especially in the mechanical arts, who are more than a bit over-zealous in denying patentability on the basis of chimerical and strained interpretations of the prior art.
So, can it be that the era of overly combative examiners is over and we’re seeing the dawning of an era of receptiveness to the patentability of novel and unobvious devices without regard to their simplicity? Perhaps, but the cynic in me causes me to wonder if the rejection of an inordinate number of applications, which resulted in many fewer issue and maintenance fees being paid, ultimately led to the realization that there are economic consequences to an overly contentious examinations. And with every public institution in dire need of funds today, it is logical to assume that Patent Office management would soon realize that a change in attitude might inure to the benefit of their fiscal well-being. If that’s the case, I say “amen.”
It is important for the applicant to feel that he is going to be fairly treated when he pays his fees and deposits his application into the patent system. The applicant is asking only that his application be fairly examined and allowed to issue with claims permissible under the law and within the confines of the prior art. When this is the scenario, most applicants will gladly pay issue and maintenance fees, and the Patent Office, performing its Constitutional role, will be fiscally sustained.
previous ten years