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Patent Pending Made Simple is a podcast for inventors who are looking to learn more about the patent process
Hello and welcome to the Patent
Pending Made Simple Podcast.
I'm your host, Summer Shaw,
and with me is Jamie Brophy.
Jamie, how are you?
Hey, Summer.
I'm good.
How are you?
I am doing all right.
I'm glad to be recording again.
Yeah.
I actually have a great
topic for us today.
This is a question that I brought up
with you recently, and I thought it
would be Cool to address it on here.
I think it'll be good
information for our listeners..
Yeah, I had a situation recently
where we received a rejection
from the patent office.
As we've talked about on here many
times before, that's completely
normal to receive a rejection
on your patent application.
And I talked to my client about
the rejection and I didn't think
the rejection was that great.
I thought we had some pretty good
arguments to just, argue against the
rejection without amending the claims.
In general, when you're responding
to a rejection, those are
the two paths you can take.
You can amend the claims or you cannot
amend the claims and just provide
arguments against the rejections.
So I was counseling my client that
maybe we should just argue against
these rejections and he thought that
sounded great, but he was worried about.
budget.
He didn't want to have to deal with
too many office actions because it
was, costing him money each time we
had to respond to an office action.
So when he mentioned I hope we don't
have to go through this too many times.
I said then maybe we
should amend the claims.
I think we'll get to allowance
faster if we amend the claims.
And I had some thoughts on
how we could amend the claims
to, get around the rejections.
What do you think about that?
How would you normally deal with that?
Yeah, that is a tough position to be
in because there is you always want to,
get an allowance as quickly as possible,
but you also don't want to do it in a
way that's going to limit your client's
right, excuse me, and you don't want
to do it in a way that's going to add
cost to the prosecution process as well.
So this is tough.
I think to answer this question
appropriately, we have to step back and
maybe talk about legal theory here for
a couple of minutes which is going to
drive a lot of our discussion, I think.
So the big thing with amending claims
during prosecution is that there is a
legal doctrine or legal theory called
prosecution history estoppel, which
says that Anything that you use to
amend your claim is by definition,
your, by definition is stopped from
claiming that your claim or invention
can capture equivalence of that and
maybe to take another step here,
Jamie, there is this legal doctrine
called doctrine of equivalence, which
says that you are entitled to it.
Protection over whatever your claims
say but additionally you are entitled
to protection around equivalence
of those claim elements, right?
So if somebody does the same thing as
what you've stated in your claim, just
maybe slightly differently or in a
different, or they employ a different
means to accomplish the same thing in
the same way or in a different way, then
those are all things that are covered
under the doctrine of equivalence.
It's a way for you to broaden
the scope of your patent.
Under that legal theory, the second
legal theory, the prosecution
history, estoppel theory is a limit
to the doctrine of equivalence.
And it says that whatever you did to
amend your claim, you can't turn around
and claim equivalence of that thing.
All right.
So when you amend a claim, you had
to submit a new underlying portion
of your claims or a claim element.
And basically what it means is when
you submit that underlying portion, You
can't get an equivalent of that thing.
You're limited to that thing
pretty specifically or strictly.
So that's really what we're
thinking about when we're thinking
about amending versus arguing.
Did I do a good enough job
here, Jamie, explaining some
of the legal background here?
Yeah, I think so.
So I think if I'm understanding basically
what you're saying, if you amend your
claims by adding in a feature, then when
it comes to when your patent issues,
and then when it comes to infringement.
Somebody has to literally like word
for word have that feature in their
product to be infringing on your patent.
Just the portion that you added
when you amended the claims,
is that kind of how it works?
Yeah, I think so.
And you did a much better job than I did,
Jamie, but it's not word to word per se.
The courts still have to construe
the claims in litigation, so they
have to define what these terms mean.
And.
And there is some leeway and latitude
in terms of interpreting those words.
But yeah, you can't just, if somebody
does that thing, but does it differently
or in a different way, you can't, you can
no longer go and get that infringement.
So it sows you into that position
from a claim interpretation or a
breadth perspective down the road.
Okay.
Basically if you're amending the claims
to get around some prior art and you add
some features in your claim amendment
because you added those to get around
the prior art, you're there's a little
fence around those added features.
You can't say doctrine of equivalence.
This actually covers something,
a little bit broader than what
I've, literally stated here.
So yeah, when you add a feature to
get around a piece of prior art,
you're you're limiting yourself
as far as that feature goes.
Is that right?
That's right.
Yeah, the other way to think about it,
or the logic behind this rule, is that
when you amend your claims to overcome
a piece of prior art or multiple
pieces of prior art, you are basically
admitting to the patent office that,
hey, everything that's in my claim is
actually disclosed in the prior art.
But here's this one thing
that is different, right?
Or is not disclosed in the
prior art, the new feature that
you were talking about, Jamie.
And the logic is that you use this
feature to get around the prior art.
You can't just find equivalence of this
feature to go find infringers, right?
You can't just have your
cake and eat it too.
You can't say that I am different
than the prior art because of this
one feature, but now I'm going to
go and assert infringement against
all the equivalence of this feature.
It doesn't work that way.
That which does not.
Infringe cannot invalidate or I
don't know the saying is like that,
which cannot invalidate, cannot
infringe something like that.
So that's the logic is right is to
prevent patentees from saying to,
from one side of the mouth that they
are different for this one reason.
And then, on the other side of
their mouth saying that, Hey, this
difference is not actually important.
Anything like this is infringing, that's.
the legal doctrine is created to prevent.
Okay, got it.
So you really want to try to avoid
amending your claims as much as possible.
But because of this prosecution history
estoppel and doctrine of equivalence.
But what about in my case?
client's situation.
They're also, budget conscious.
They don't want to spend a ton of
money on prosecuting the application.
It would be beneficial to them to
get a patent, as soon as possible.
They're probably not even going
to be enforcing their patent.
They're probably going to
eventually just end up looking for
someone to license their patent
or buy it or something like that.
Then, in that situation, would
you go ahead and amend the
claims instead of arguing?
Yeah, there are a lot of practical
considerations, which I'd
like to get into in a second.
But from my perspective, the number
one consideration is whether this
new feature that you're adding,
whether it's going to be practiced
by your competitors in that way.
So if you can look at that underlying
portion or the new feature and say,
yeah, I think about 80 or 90 percent of
my competitors are going to do it this
way, then I am not worried about adding
that feature to overcome a rejection.
But if you look at that newly added
feature and you say, wow, only 10 percent
of my competitors are going to do this
or 20 percent or, it's unlikely that
my competitors will do it this way.
I would say that counsels against
making the amendment and it counsels
towards making the argument.
So that's the number one thing is, is
this new thing that you're adding, is it
going to be practiced by other people?
And I think that should be the number one
kind of guiding principle on this process.
To put it in different terms, Jamie,
when I used to litigate patents and I was
on the other side or on the defense of
a patent lawsuit, my number one thing,
the first thing that I would ever do
in analyzing patents would be to look
at the prosecution history, right?
And look at the underlying portion.
And I would just say, Are
we not practicing any one of
these underlying portions?
And if I, if we did, I would
build my entire case around
that underlying portion, right?
That is the theory of my
entire litigation defense.
So it's it's really important, right?
And it's something to be aware of.
So that's the number one thing that I
would say should be our guiding principle.
When you're trying to make the
decision, but there are other
practical reasons as well, right?
Cost is certainly one of them.
The examiner that you're
dealing with is another one.
So there are a few other things
that we can get into Jamie but
what do you think about that?
Is that an appropriate
kind of framework here?
Yeah.
Yeah, I think so.
I think that's a good way to look at it.
And we did take a look at that
with my client, is this feature
that we want to add to the claim.
How likely is it that your competitors
are going to do it this exact way?
The feature that we were thinking about
adding was definitely the most preferable
way to, to practice the invention.
A competitor could do it a different
way, but it would be an inferior product.
So yeah, I think that's a good,
that's a good consideration for sure.
Okay, good.
And I guess this may be outside of
the scope of this podcast, but there
are some ways to potentially avoid
Prosecution history estoppel or minimize
its impact which you know is definitely
an advanced kind of strategy stuff and
May require you to file a continuation
application or something like that but
If you're in that place and you need
to file an amendment for practical
reasons, then maybe, maybe you should
consider some of those other strategies
to minimize the impact that prosecution
history estoppel can have on your case.
Got it.
Okay.
Yeah I just lost my train of thought.
No worries.
Dennis or me will edit it out.
Yeah, I totally forgot
what I was going to say.
No worries.
I I can start and you can
come in as you remember.
Yeah.
Okay, Jamie, so that's the
number one consideration.
The second consideration, I think, is
the strength of your argument, right?
And maybe related to that is how easy
or difficult the examiner is to that
kind of a conversation shall we say.
So I think the other thing
to look at and weigh is how
strong is your argument, right?
If it's very strong then maybe
that counsels towards making the
argument and not an amendment.
And then related to that
is the examiner, right?
So we can pull examiner
statistics and see, how often
do they allow a case, right?
Do they have a high allowance
rate or a low allowance rate?
We can also look at how many
times have they allowed a case
with certain types of rejections.
We can even make granular as to their
allowance rate with or without amendments.
So that may be another factor to look at.
Potentially having an examiner
interview, I think is also
another way to think about this.
I sometimes use the examiner interview
as a way to preview my arguments to the
examiner or a way to preview their kind
of response to those arguments, right?
And if they seem like they understand
our position and our arguments,
Then I would just go ahead and
proceed with the argument, right?
But if they're like no, there's no way
you get, if you just can't see eye to eye
in that interview or a conversation with
the examiner, then maybe that counsels
towards Making the amendment, but I maybe
we can bucket those Additional factors
as like getting more data about what
your outcomes are going to be right?
based on the strength of the argument the
examiners predisposition and willingness
to listen to that argument and You can get
some additional data points about what the
outcomes going to be before you actually
file the response Yeah, I think those are
also great to take into consideration.
I love doing interviews with the
examiners because you really get a
good feeling for how reasonable or
unreasonable they're going to be.
But as far as the strength of
your argument, I think it's been
my experience that if you just
submit arguments the examiner's not
probably going to allow your case.
You're probably going to
get another rejection.
And I would say.
Most of the time.
I don't think I've ever submitted
just arguments, no amendments,
and then gotten an allowance.
I can't think of a single
time that's happened.
I will say I've had this happen.
A bunch of time, not a ton,
but over the last two years,
probably half a dozen times.
And in each of those cases, the
examiner was really far off, really
off base with their rejection.
Like it was very clear that they
didn't understand the invention at all.
Or they didn't understand the prior art.
So it just seemed very clear to me that
they're just like throwing something
together because they were, And under
the gun on a deadline and they needed to
make a rejection so in those cases I've
not made any arguments and then the next
thing I get back is a notice of allowance.
So I think if the examiner is just
completely wrong, way off base, then,
now I think it, it may be worth it to
take a shot at the argument because
I have gotten allowances that way.
Not very often though.
Okay.
So you're saying when you've made
arguments but not amendments.
Okay.
Yeah.
Yeah.
That does make sense.
If they're way off base and, your
argument is really strong, maybe that's
just the difference between your,
prosecution area and my prosecution area.
It's hard to be way off base in, physical
apparatus or mechanical arts, right?
It's like this thing, it either,
you is or works the same as this
other thing, or it doesn't, right?
In the software side, there's a
lot of room for interpretation.
Okay.
Yeah, that makes sense.
Okay, so is there anything else you
should take into consideration when
you're determining whether to amend
the claims or leave the claims as
they are and just submit arguments?
Yeah, the last set of considerations
is what your overall strategy is
going to be in the prosecution.
Sometimes we just know because the
client has already charted out that
path for you, or you've determined
that's the only way to get something
allowed is that you have to go to some
higher authority than the examiner.
So you're either going to have
to, file a pre appeal brief to get
a panel of reviewers to look at.
Look at the case or you need to file an
appeal brief to get a judge at the patent
office to take a look at this In those
cases right if that's gonna be the only
pathway to allow ability Then I would just
file the arguments and I would try to set
the case up for appeal that way Because
we just know the examiner's being so
unreasonable so unwilling to listen that
And even extending an olive branch of an
amendment is not going to do it for us.
They're just going to keep yanking you
around and issue another rejection,
do another search, and it's just
going to be a never ending cycle.
So in those cases, when I'm getting a
case ready for appeal, I will make the
argument as opposed to the amendment.
Yeah, and that's something that,
sometimes you can make that
determination based on those examiner
statistics you were talking about.
If this examiner has a really low
allowance rate, or if you have an
interview with the examiner and
they're just, maybe If you're not
combative or not willing to listen
to your arguments, then, it's going
to be best to proceed to appeal.
That's really the only way to get
your case in front of somebody else.
You can't ask for a different
examiner or anything like that.
Sometimes you need your application
to be reviewed by somebody else.
And that happens in the pre appeal
and it happens during the appeal.
And the appeal is really not that scary.
It might sound scary, we do it frequently
and it's really not that scary.
Yeah.
And we get really good outcomes
from those appeals processes.
So it's worth doing.
And in some cases it may be even
cheaper than, filing an amendment
and then a subsequent RCE.
So that's something to think about.
Sometimes I've been able to telegraph
my intention to appeal to the
examiner right in the interview.
So if I present my case and the examiner
is just not buying it or doesn't see
it in See it that way at all, then
I will sometimes try to phrase that
conversation as I would think that
an appeals judge would see it this
way because of X, Y, and Z reasons.
So I try to preview that or see
the idea that, Hey, we're gonna.
appeal this thing if don't have a
reasonable interpretation on this
thing and that sometimes helps
move the case forward as well.
So you can telegraph your invention,
or your intention, to the examiner
to help move the case along.
Yeah, I think that's a
good strategy as well.
The.
Tough thing about appeal is
that it just takes so long.
You could be waiting a couple of years
before you get a decision on your appeal.
So you know, that's also something
else to take into consideration.
That's right.
It is.
It does come with its downsides.
I would say that a lot of times we get a
disposition at the pre appeal brief stage.
So the appeal process as has several.
and oftentimes we get a reversal
on the rejection of the pre appeal
brief, which is, usually six to
eight months from filing date.
So that's nice.
The other thing is that sometimes
the client's not in a rush to
get the ban allowed, right?
They're more interested in, stopping the
spend or the bleed on the prosecution.
In which case they're happy to say, yeah,
this is going to be pending for a couple
of years, but at least I'm not going to
pay any fees over those couple of years,
which may be preferable to having to pay,
amendment and RCE fees in the near term.
I think it's definitely worth talking
to your client or to your attorney
about this and see what makes sense,
based on what you're ultimately
going to do with the patent and the
timeline of when you're going to do it.
Yeah, that's a good point.
And you're still patent
pending during that whole time.
Yeah, I think it depends also, on the
client's sort of business plan and
what their strategies are with their,
they might be willing to just let that
application be pending for awhile, or
it might be really important to them
to get a patent, as soon as possible,
regardless of what the claims say.
So there's just there's a lot
to take into consideration.
And.
Yeah.
Do you think we covered everything
or is there more, are there
more things we should mention?
No, I think this is it.
I yeah, I would agree with that.
If the client wants to get a
patent as soon as possible, then
maybe make the amendment, make
the best amendment that you can.
And also setting their expectations
for costs is also important, for
those listening, setting your own
expectations is also important.
And I have some examiners who
just, you know, I will not allow
a case until they get to an RCE,
like it just doesn't matter.
So I've had cases where I, make
what I think are very reasonable
amendments but it's not going to
get allowed until it gets to an RCE.
Or sometimes I make just arguments
several times in a row and I don't get
an allowance until I get to an RCE.
So there, there are some examiners
out there who are just like not
going to let you through until you go
through a couple of rounds of this.
Take that into consideration.
The examiner statistics again
are pretty helpful here.
The data will show you, hey, this
examiner, 90 percent of their
cases allowed are after a first
RCE or after a final rejection.
Then that kind of tells you that, hey,
no matter, How much time and effort
we put into this first one, we're
still going to have to get to the
second one before we get it allowed.
Yeah good points.
Yeah.
So with my client that we were trying to
determine what to do, we ended up just
filing the arguments and, Lo and behold,
we recently got a final rejection on it.
So my client's trying to determine
what they want to do next.
So we'll see what happens.
I have a feeling we're going
to have to go to appeal on this
one, but but yeah, We'll see.
So that's where we're at.
But yeah, it was it was a whole
thing going back and forth with
the client on should we amend?
Should we argue?
What are the benefits of this
and the benefits for that?
Yeah, it's a lot to take into account.
It is a lot.
And yeah it's, as I am sure the
listeners can now appreciate, hopefully
it's not a straightforward decision.
It's complicated.
And you can second guess
yourself a bunch of times.
But yeah, that's an unfortunate
situation with your client, Jamie.
It's tough.
One of the best things that I think we
can do and that the listeners can do
is to, Set your expectations at least
two rounds of rejection with the patent
office from a budget perspective.
I think that's maybe the most helpful
thing because you wouldn't believe it.
There are so many cases where I was
like, I am so right and I didn't
get an allowance until I got to
the final rejection or until I
filed the RCE and paid those fees,
which is painful for the client.
But that's just how it is sometimes.
Yeah.
Oh, man.
All right.
I think we covered everything, Summer.
Unless you have anything to add,
I will talk to you next time.
Yeah.
That sounds good.
This was very fun, Jamie.
Thanks for the question.
I hope this helps and yeah,
we'll talk on the next one.