46th Annual IP Institute: Patent Examiners: The Good, The Bad, and the Ugly Truth About Patent Prosecution

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46th Annual IP Institute: Patent Examiners: The Good, The Bad, and the Ugly Truth About Patent Prosecution

Intellectual Property Law Section

Credit(s):

1 Participatory MCLE Credits

Course Number:

IP_Institute_2022_13

Original Program Date:

November 5, 2022

Duration:

1 hour 10 minutes

Access:

Available for 3 months after Registration

Passport:

This product is Passport Eligible

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Category: Intellectual Property Law

Category: Intellectual Property Law (show less)

At its best, patent prosecution is a collaboration between patent examiners and patent practitioners. Sometimes, it is an adversarial process fraught with disagreement and misunderstanding between examiners and practitioners that can be traced to the “type” of examiner the practitioner is dealing with, and the practitioner lacking the tools to resolve the situation. This panel will address how practitioners can resolve issues and collaborate with examiners while maintaining courtesy and decorum before the USPTO (as required by 37 C.F.R. 1.3) in the course of being an advocate for their client. Various issues will be discussed, including how to deal with US Patent Examiners of varying levels of experience and authority (e.g., New Examiners, Primary Examiners, “English as a Second Language” Examiners, etc.), case law being “ignored” or misapplied by Examiners, Examiners disregarding “mere attorney argument”, etc.. There will be discussion of the USPTO’s Patent Ombudsman program, and how the Patent Ombudsman can help resolve issues between examiners and practitioners.

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