The members of our firm have
filed thousands of responses to actions of the Patent Office,
including not only Amendments, but also Appeal Briefs, appendices
illustrating the prior art, and factual Declarations (under Rule
132). However, experience does not automatically convey expertise.
We believe that:
1) the top priority in prosecution is to avoid unintentional loss
of effective claim scope;
2) where possible, we try to help the Examiner understand the
claimed invention's patentability; but
3) where cooperative interchanges with the Examiner are not
working, appealing a certain percentage of rejections is very
useful to maintain a fair balance.
We use telephone interviews very often. We find that they will help
to either reach agreement or to identifiy disagreements quickly. We
also find face-to-face interviews in the Patent Office very useful
in cases which are important enough to justify the expense.
Proof of facts can be very useful in prosecution (especially if a
case later goes to appeal), so we commonly submit publications as
exhibits (whether or not they are prior art), as well as Rule 132
Declarations. Like most attorneys, we tend to be impressed by our
own arguments, but sometimes a bit of proof is much more
persuasive. Factual proofs also reduce the risk of prosecution
history estoppel.
We also understand that not every application has the same
priority: some cases may be worth multiple continuations or ex
parte appeals, but others may not. We are able to mount a full
offense in a key case, but we understand that our clients' business
needs may not justify a full offensive in every case. We listen
carefully to our clients, and try hard to fit their
priorities.
Nothing on any part of this web site provides legal advice, nor creates any attorney-client relationship. We NEVER accept clients without a signed representation agreement: if we have not agreed in writing to represent you, we are not your attorneys.
Not certified by the Texas Board of Legal Specialization. Copyright Groover & Associates, PLLC, 1999-present