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July 17, 2023
John Rizvi, Esq.

Can I Request a Different Patent Examiner to Avoid Rejections in My Patent Application?

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Next question comes in from Katrina P. Katrina would like to know what can be done to request another examiner and avoid the examiners rejection Woda.

Okay, so it's Katrina with a que Katrina with a text between Okay.

And you know, unfortunately, it is very hard to avoid an examiner that's been assigned to your case.

What, but before I would try to switch the examiner, I don't know if you're working with a patent attorney. But one thing that can be done is you can request an oral interview with the examiner. Now in order for them to granted to really boost your chances of that being granted, what you usually have to do is submit a written proposal of what you want to discuss, and why you believe your idea should be patented. Now you don't submit it, you don't file that response. But you send it informally to the examiner, and you request that the examiner call you before they enter that response. So this is a beautiful system in patent law that doesn't exist in civil litigation or in criminal trials. Imagine a criminal defense attorney, being able to speak off the record to the judge and say, Your Honor, I would like to argue that my client was sleeping at his house, the night of the murder, and therefore he couldn't be guilty. I'd like to make that argument.

What do you think?

Should I make that? Is that a strong argument? What are your thoughts? You can't do that in a criminal case? You can't even do that in a civil case. If you're arguing that, you know, you can't call the judge and say, Your Honor, I think this defendant, I'm gonna I'd like to argue that the defendant accepted my contract. Because even though he didn't sign paperwork, he allowed the bricks for the driveway to be dropped off in front of his house. And I would like to argue that that was constructive acceptance of the contract that they didn't sign. But if they didn't want this driveway done, they could have just refused the delivery drivers delivery. What do you think, Your Honor? Is that a strong argument? Can I make it you cannot do that. But in patent law, it's it's it's the beauty is that when an examiner rejects your your idea is not being patentable. As long as you put forth the argument in a written document, that's the best way you are permitted to ask the examiner for an oral interview, so that you can submit your argument and get his thoughts. Now, the examiner might say, You know what, that's nonsense. There's no way that's going to that's a big enough difference to get you a patent. So you now know, when you haven't filed a response, this is just preliminary, you now know, and your attorney knows, okay, let's not make this argument because the guy's already told me, he's not going to accept it. So then you can go with Plan B, the best thing is perhaps to have a plan B available prior to the call. So you can say like, okay, examiner, you didn't like my argument a? What about argument B? So going back to the criminal case, it's like that criminal defense attorney saying, Your Honor.

Okay. You didn't like the idea of me, of me saying that the person was sleeping in his house. My client was sleeping at his house, and therefore he couldn't have committed the murder. How about that he was drunk at a bar. And what do you think about that? It helped you because that can't happen. in patent law. You have the ability to speak to an examiner. Now I use it extremely sparingly. You don't want to waste your shot by you know, it's like the boy that cried wolf like if he keeps crying wolf. Eventually the townspeople the village, people are going to stop listening to him. So save that ammunition. But when you think the examiner is being unreasonable, like as Katrina wants to switch examiner's, that is a risky approach.

And it's extremely difficult to accomplish. I would much rather before you try to switch and examiner

asked to have an examiner interview. And in that way, they're gonna get to see your and hear your argument. They'll realize you're a real person. There's a lot of advantages to that and he might give you clues to what you can argue to get your idea patented. They usually are not going to speak to the inventor

and the inventors attorney, they don't want to be tag team. So if you have a patent attorney, I highly suggest

As you let your patent attorney handle this call, it's a extremely detailed call that's going to be on structural element names. It's not something that a non patent attorney can really do well on these examiner interviews

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