The Examiner Usually Has A Good Point

The first rule of thumb is to remember that patent prosecution is an ex parte proceeding. The patent examiner is not the enemy. He is not even an opposing counsel. Unlike inter partes litigation where the opposing counsel is being paid to disagree, a patent examiner is actually not opposed to the applicant. Both the patent attorney and the patent examiner want to have a patent issue with claims that are valid over the prior art.

The second rule to remember is that the patent examiner is often, and even usually correct in the substance of the rejections. Our office has taken over responsibility for numerous patent matters that were unsuccessfully prosecuted by others. In many instances the previous attorneys were well regarded, and apparently understood the technology. But instead of repeating the same arguments over and over, I created new arguments and strategies. I was more successful because I honestly and directly addressed the concerns of the patent examiner.

The third rule of thumb in responding to office actions is to provide objective evidence. Opinions carry little weight. Where appropriate, provide evidence of unexpected results, comparative data, scientific arguments, and/or supporting declarations.