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46th Annual IP Institute: Patent Examiners: The Good, The Bad, and the Ugly Truth About Patent Prosecution
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.
1 Participatory MCLE Credits
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We are committed to accessibility! All OnDemand programs after January 1, 2022 include closed captioning. To request closed captioning for a program older than January 1, 2022, send us a note at accessibility@calawyers.org or contact us at 916-516-1760 for assistance.
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