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Episode 24 of the “Law & Business” Podcast features Wil Jacques, the patent agent of Verna Law, P.C.
We discuss the patent application in three thoughts.
Wil Jacques, Patent Agent
After filing the patent application, there is an office action (rejection from the United States Patent and Trademark Office).
- First office action: The job of the patent examiner is to determine whether or not a patent application complies with the legal requirements for patentability. In particular, the examiner is to evaluate whether the claims in a patent application are enabled by the application’s specification, and whether the claims particularly point out and distinctly claim the invention. In addition, the examiner will conduct a search of United States patents and published applications, foreign patent documents, and available literature, to see if the claimed invention is new and nonobvious.
- Applicant’s amendment and response: In responding to the first office action, the applicant’s patent attorney or agent will draft a response document that points out perceived errors in the office action. Frequently, this response document will include an amendment to the claims in order to clarify the invention and, in some cases, to narrow the claims so as to overcome the prior art cited in the office action. The response will also contain arguments as to how the pending claims are patentable in spite of the prior art references cited or the objections made.
- Final Rejection: In some cases, the patent office is not persuaded by the applicant’s response. Instead, the patent examiner either continues to reject the application on the same grounds identified in the first office action, or develops new reasons why the application still does not meet the legal requirements for patentability. The applicant is notified of this continued rejection through a second office action. In most cases, this second office action will be made “final.” When an office action is final, the applicant’s response is then limited.
Here is a lightly-edited transcript of the podcast episode:
Anthony Verna:
Welcome to the Law and Business podcast. I’m Anthony Verna with Verna Law PC, focusing on intellectual property and advertising law. With me is my patent agent, Wil Jacques.
Wil Jacques:
Good afternoon. How are you?
Anthony Verna:
I’m well, thank you. And Wil is also the monetization expert for intellectual property at Emanus LLC, not just the patent agent for Verna law. Well, let’s talk a little bit about the patent application processes. We kind of give our listeners a patent 101 overview with a few episodes. When we’re filing a patent application, what’s our heaviest emphasis on in filing that patent application?
Wil Jacques:
Well, certainly you want to make sure that it’s in the best condition possible. You’ve described everything according to the law, there are two basic ones that patent agents, attorneys want to keep at the forefront. And that 35 USC 101 which says that you’re patenting in a certain allowable area, that is, it’s a process.
It’s a machine, it’s an article of manufacturer or devices. People might know it, you know, or a composition of matter. So, you want to make sure that you address, you know, one of the subject matter areas in your patent. And then you know, the next thing is 35 USC 112 and there are many others that impact your ability to get a patent or not get a patent. But in terms of just that basic document, you know, 35 USC 112 is that you must have a written description, that clearly describes in a concise manner what it is you’ve invented. And it has to be innately.
Anthony Verna:
So, once we get this application drafted and we file it with the patent and trademark office, same thing on the trademark side. Like, we’re going to wait a while.. On the patent side, we’re going to wait a lot longer on the trademark side, aren’t we?
Wil Jacques:
Yeah. We’re going to wait. Many years ago, the patent office agreed that it would attempt to get all of its applications fully through the system in about three years. And typically they do a very good job these days of doing that for folks that are so inclined, you could actually choose to have an accelerated examination of your patent, but that’s going to cost you.
Anthony Verna:
And as I said, the fees are going way up.
Wil Jacques:
It’ll be a fair number of dollars that you gotta come up with in order to get that. But normally it’ll take anywhere from about say two to three years for most of the applications that I see any way up before you get some sort of an office action that is, somebody’s picked up your patent, at the U S PTO and examiner and not someone. And of course, their job is to kind of review that application and decide whether or not it meets merits of the law in terms of being awarded a patent.
And so they will send a notice to the applicant or the attorney working on their behalf to argue that we’re not going to give you this patent.
Anthony Verna:
Right. So, the office action that the applicant will receive is a rejection of the application with a description of what’s wrong with it?
Wil Jacques:
Generally yes. And it can take a couple of different forms. The examiner will certainly want to review the application on the merits and generally speaking, in light of prior art, they will come back with rejections of your claims based on the readings and subject matter that might’ve been disclosed in some of these other documents, in other cases, or I should say maybe even in the same case, they will come back to you with what we call objections, particularly for our applicants that may choose to file on their own. I should say that the patent office does provide a fair amount of help to what we call these pro se applicants.
But in general, there will be objections as a matter of form or how one presents the application to the office. They want their jobs to be easy to give you the fairest review. And if you’re not following these rules, that makes it a little bit difficult for them. So, they will object to certain things.
Anthony Verna:
So, what is the either applicant’s job or the representative of the applicant’s job once that office action is received?
Wil Jacques:
Okay, so the examiner at the patent office typically is going to send a rejection on the marriage based on some aspect of the law, in light of certain documents that they’ve found in their search. And so, they kind of looked at this area as well and saying, well, you know, we think that was disclosed. You’re not going to get a patent because of this. They will explain that those areas in which they are doing their rejection.
Section 102, 103, it comes back to the patent practitioner. If they’re working on the applicant’s behalf and at that point, it is up to the practitioner to come up with an argument as to why the examiner may have erred in their review of the claims that the applicant is asking for.
Anthony Verna:
So, in the review of the claims, does that mean that the claims of the patent have to be rewritten at that point, or is the patent examiner going to suggest rewritten claims? How does that work?
Wil Jacques:
Well, certainly, from the applicant’s point of view, you want an attorney or agent who’s going to work your behalf and let’s say, try to argue that no, I really think it just got it wrong. And what we wrote there was absolutely right. And here’s the reason why. I would caution that particular stance with the USPTO is probably not a good one.
You know, as my mom used to say, if you want to attract flies, you can use honey a hell of a lot better than you can use vinegar. And so, you want to be very professional, you want to hold your ground. But by being derogatory towards the examiner about your claim is not going to get you anywhere. But what you do want to do is to point out how you’re different. You want to show how you’re distinctly different and you came before the art that they’re putting in front of you. And you will need to, typically what you want to do is to argue only the points that they put in front of you. And so, you don’t want to be Webster, you don’t want to be an encyclopedia. You don’t want to try to throw everything in as to why they ought to give you those claims.
But you want to be concise and explain. Now, if what you found in terms of the examiners rejection to be somewhat true, then you have the option to do what we call amend those claims. Now, you can’t add any new matter whatsoever to an application once it’s been filed. But you’re able to make amendments in light of the art that the examiner has put in front of you. And so, you may find yourself, if you have element A, B, and C in a prior art application, that precludes patent ability of your invention. Then within your application you may find the ability to claim instead A, B, C prime or A, B, C and D and D in fact, , provides you some level of distinctness and obviousness over what the examiner has cited against you.
Anthony Verna:
Gotcha. Does that mean then that the claims are narrowed at this particular instance?
Because like you said, you can’t add anything to the patent application, but those claims can certainly narrow the scope of the invention.
Wil Jacques:
Yeah. Generally speaking, when one starts to amend their applications, it’s somewhat easy to go in and narrow those applications. You may find in fact that you could have missed something in the very beginning that was already disclosed in your application that didn’t make it into the claims. Not the very best light for the agent or the attorney, but in fact you may have found something and so you may even be able to broaden, you know, what it is that you have presented as long as it’s as shown in that previous specification or the drawings, including the drawings. Because drawings have a lot of information and actually is used by the patent office in terms of deciding whether or not there is an invention that exists or not.
Anthony Verna:
Let’s talk about the deadline then when we received the office action. How long then does the applicant have to respond to that?
Wil Jacques:
Typically the office gives you three months to respond to their office actions. And that’s three months from the mailing date from the US PTO. And so, the joke is a lot of agents and attorneys will go right up to the very end of that three months. But they think they give you, a sufficient amount of time to respond to them with a response or a response and amendment. And I made the distinction that sometimes the response is just to indicate that I think you’ve erred and here is why and you’re not really making any changes to the application.
Anthony Verna:
You’re making really a substantive argument stating why what is cited is actually different from what the claims and the application state.
Wil Jacques:
Absolutely. Absolutely. And in other cases, you may be making both a response to certain rejections and or objections that the examiner has cited as well as making amendments to the claim. So, in that respect, it would be both a response and an amendment, but you’re only given three months to do that. And if you run past that three months, you’re not dead. You’re still allowed to file a response within another three-month period. As long as you pay a fee in order to get that done, it is no reason to ask for permission to do this. Under the law, you’re allowed to file this response after the three-month period. As long as that fee is paid and it’s still responded to in the right way, but after six months, then you’re dead. Then your application goes abandoned, which means if you really wanted this invention, you kind of start the whole process all over again with a new date of invention.
Anthony Verna:
Are there cases where the patent and trademark office examiner finds maybe more than one invention in an application or maybe your response is best in multiple applications instead of one application?
Wil Jacques:
It happens a lot. As a matter of fact, that happens more frequently than not. And so, as you’re filing these applications, you’re trying to get the broadest level of claim possible and sometimes broadened as the examiner is confused a little bit. And so, one, the breadth of the patent application may get to be somewhat wider than it should be. For instance, you may attempt to get a method of doing something in a claim that in the examiner’s mind may be distinctly different from that article or device. You know, that is actually a neighboring, this end result that you’re talking about. And so that particular case they will issue what they call a restriction, which essentially says, we see more than one invention here in your application and you have to decide which one you want to continue prosecuting with the office.
Anthony Verna:
Can the applicant divide then into two applications or is that restarting one of those two from the very beginning?
Wil Jacques:
Assuming that the restriction requirement only dealt with what they believe were two inventions, it could be multiple inventions. Yeah. At that point you are allowed to take those, the balance of the inventions that you started with and actually file for what we call a divisional. Again, you still have a certain amount of time, you know to get this filing done but you’re not starting over again as far as the clock is concerned. So, if you filed, you know everything on January one and you’ve got, some sort of response about the January one, 2017 you got a response back two years later. You know those divisionals still take precedents back to that January one, 2017 date. And so, any intervening art would not be cited against those divisionals, which are in fact new inventions as long as they’re supported in the original application itself, that material.
Anthony Verna:
Gotcha. Gotcha. What happens if the patent and trademark office examiner has decided, that in this patent application, I’ve seen it all, all of your arguments have come back and therefore I can’t really allow you to keep making the same arguments. Do we get to a final rejection?
Wil Jacques:
You will, you will receive a final rejection from the office as it goes with the patent office. I have inventors that walk into my office and they may be a little bit on edge about how the patent office is behaving, at least in their mind. And they say things like, gosh, don’t we pay enough money for them to do this thing right? And I have to kindly remind them that unlike many quote unquote or unlike agencies, which is what they’re confusing the patent office with, they’re totally self-funded and supported only by the fees that they charge the public.
So not one of your tax dollars ever went to support the and office. Right. So again, to get to the point at this final rejection time, you’re still allowed to continue arguments for your invention with the patent office as long as you pay the fee.
Anthony Verna:
And I actually have that sitting in front of me. That’s called a request for continued examination. And the patent and trademark office charges entities a fee of $1,200 for a first request and then $1,700 for a second or subsequent request for continued examination.
Wil Jacques:
Yes, yes. So, they make a fair amount of money, particularly if you hold steadfast to the fact that you believe that they’ve erred in that the claims that you’re asking for are in fact ones that you should be allowed. You can always decide to abandon the application at that point as well. You can decide that the arguments are being made by the examiner, US PTO are much more, than you’re able to surmount and surmounting these arguments, again, is a conversation between you and your patent practitioner.
And so you may in fact be able to still get a patent. But what I try to caution my inventors about is whether or not, once you’ve kind of sliced and diced, which is typically what’s happening. Sure. You know your application to a certain point. Is there still value in what you believe is an application that may be issued to you.
Anthony Verna:
Part of that as always, is going to be a business judgment at that point as well.
Wil Jacques:
It absolutely is. And again, I would invite your listeners to check out some of your other podcasts, but we did mention that it is not really the job of your patent practitioner to be your business partner. But you know, the way we do it at Verna Law, we try to advise folks along these lines because in the end of the day, they’re spending a lot of money for this asset that most of them hope will support their ability to monetize it later on.
Anthony Verna:
Absolutely agree with you. I man, that that’s why we’re together. What are some other options after the final rejection?
Wil Jacques:
So after the final rejection you’re allowed to, within a certain period of time, actually try to sneak another one in on the patent office and so you could make an amendment to your claims or an amendment to your application, before the statutory end date of that final rejection. And it simply said, you’re given three months before this period of time for response to the final rejection. But if you’re able to respond within two months then there’s certain fee advantages. Let’s say that you might be afforded and, in some cases, you may actually be able to wear your examiner down and they may finally come to light and see your point. If that doesn’t happen, of course then as you mentioned earlier than you would file at a fair amount of money, a request for continued examination.
Anthony Verna:
Right. One of the options there, as you mentioned, the amendment after final, no US PTO fees are required to file the amendment after the final no rejection. But still, if that doesn’t clear up the issues, the applicant will still receive an action.
Wil Jacques:
Yes, they will receive, they will still receive an action. And if that examiner responds either before the end of that first set statutory end date or after that statutory in date that it was originally set, then your fees will be adjusted accordingly.
Anthony Verna:
So, at this point, if the inventor is still not done fighting is still itching to get this patent, is there any other options?
Wil Jacques:
You have other options and so short of a, and this is something you might have done much earlier, which is I don’t advise it all the time, but uh, to go to the supervisor of the examiner that you’re in conflict with and tried to get an oral, a face to face meeting to try to clear up this point.
But that’s something that should’ve been done, you know, quite some time ago. But if you get to the point where you’ve gotten this final rejection, you still believe that your invention is of merit at this point. You can appeal to the patent trial and appeal board. And this is a judge type setting. Where professionals from the patent office along with the examiner would sit down in light of your appeal brief or your arguments that would be presented to them and give it yet another look-see as to whether or not your arguments will hold and support patentability or allowance of these claims that you see.
Anthony Verna:
Going to the patent board is a time consuming endeavor, right? Most applications that are waiting appeal await what? Another two year wait?
Wil Jacques:
At least at least, and not to mention even though there’s not any extensive other than your petition fees that you’re playing to the patent office, it is an area that is fraught with hurdles and trips and so you’re likely to have legal representation even within the patent office at this point and those fees can start to mount as well.
Anthony Verna:
Just to start an appeal in the patent trial and appeal board is about $2,800 which is significantly higher than a trademark appeal, but like you said, it’s fraught with issues because it’s procedural in nature. And in a way, while it is an extra review, in a way, you are fighting the patent and trademark office itself.
Wil Jacques:
Yeah, not exactly kindly looked upon by the US PTO to let’s say help it’s pro se inventors to fight them and so at this point you’re pretty much on your own.
Anthony Verna: I mean the judges who rule are administrative judges, so theoretically they are separate and apart from the patent and trademark office. Yeah, I’ve been to the complex. I know that the judges are really in the same comp.
Wil Jacques:
Well as they say, over the wall, arms link. it’s a beautiful office and a lot of them are separated by glass walls so you could see your colleagues all day long.
Anthony Verna:
What are the likely results going to the patent trial and appeal board? Are you expecting the board to allow the patent application or are you expecting the board to basically write an order instructing the patent examiner on how to re-examine the patent?
Wil Jacques:
It could go any number of ways and I’m glad you asked that question. I’ve not looked at the data on this in quite some time, but the patent that the P tab as we refer to them could instruct the examiner to take a different track or a different view in terms of the examination of your application. And in fact, may even, suggest that the claims are patentable and provide some background to the examiner or some information and support to the examiner that says this is why. You know, as is predominantly the case… And I wish I knew the numbers, we’ll have to do that in another podcast…
Anthony Verna:
I actually have the numbers, actually I just pulled up the numbers while you were talking. And the numbers tend to be about the same year in and year out where 55% of rejections, and this was fiscal year ending in February of 2017 so March 2016 to February 2017, 55.3% of appeals were completely affirmed. So, in other words, going to the board isn’t a bad idea. What was completely reversed was about 30%. Affirmed in part and reversed in part was 13.2%.
Wil Jacques:
Yeah, not a bad idea. It’s just the matter of what’s the probability, the chances that you might succeed. And if you’re talking about, again not to be pejorative and to separate our independent inventors of the world, our small company inventors of the world, from our large corporate inventors of the world. The amount of money pales with respect to what it is that that patent brings to you in terms of value. And so that’s what should be put on the table in terms of driving your decision versus your ego. Of fighting and having a kind of win against the US PTO.
Anthony Verna:
I think just to wrap this up, I think a couple thoughts for our listeners is that the patent application process is long, and the claims really do matter. That’s the important part. And going through what the invention is multiple times between the applicant and the representative to me is the most important part.
Wil Jacques:
It is absolutely the most important part. Remember, a patent is a right for you to keep somebody from doing something. It is not a right for you to do something. And it’s a small nuance that a lot of our independent inventors don’t seem to understand. And so, we try to make sure that they have this understanding as we kind of go through the process.
The other thing we always want to make sure that they keep in mind is that as you’re going through this argument, through these changes with the patent office, let’s say you made an amendment and you actually canceled claims, even through the P Tab, you can’t go back and get those later on. Once they’re gone, they’re gone. And the whole world at some point gets to see these arguments, that are going on between you and the patent office and therefore can make their own assessments about what the real value of your patent, assuming it was issued. You know what the true value is, what it is that you gave up, and what it is that you’re now not able to stop them from doing.
Anthony Verna:
All right. Well, thanks very much for being on this episode. We’ll have more episodes with Wil and more episodes coming up in the coming weeks.
Wil Jacques:
Thanks very much. I appreciate the time to speak.
Anthony Verna:
Right, and also before we go, uh, Wil’s email address is wil@vernalaw.com. My email address is Anthony@vernalaw.com. Feel free to write to us with any questions you may have.
Wil Jacques:
Yeah. Thanks Anthony.