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.
