By David S. Kim and Glenn M. Kubota of Morrison & Foerster
“I think the claims are allowable.” To a patent practitioner, those are the sweetest words you can hear. You’ve worked hard to establish a good relationship, and have finally convinced the examiner that your claims are patentable. Then, without warning, you get another rejection. What happened?
When a patent application is examined at the United States Patent and Trademark Office (USPTO), amendments and/or arguments may persuade the examiner that the application is allowable. However, in discussions never seen by the practitioner, the examiner must seek the approval of a Primary Examiner (PE) or a Supervisory Patent Examiner (SPE), who may overrule the examiner (sometimes without substantive basis, often on intuition alone) and instruct the examiner to issue another rejection. This article, through a survey of former examiners and the authors’ own experience on both sides as examiner and practitioner, describes the examination structure and process at the USPTO, and how practitioners can help an examiner convince the SPE/PE of the patentability of a case.
The General Context at the USPTO
There are over 6,000 USPTO patent examiners, organized into art units. An art unit is a group of examiners who specialize in a specific technology or “art.” Each art unit typically has 13-20 examiners, managed by a SPE. An art unit includes PEs with “signatory authority” ...