Rejection is a part of life. The manner in which a person responds to rejection defines her character. Rejection is also a part of the patent examination process, and the manner in which a patent attorney handles USPTO rejections defines his competency. The patent attorney you choose to trust with your intellectual property can make or break your financial success. So, make sure your patent attorney is a winner.
The Winning Mindset
In patent prosecution, there are two types of rejections. The first type involves previously unknown prior art. Rejections of this type are generally productive because they provide an opportunity to strengthen the patent claims. In contrast, the second type of patent rejections involves regurgitation of the previously cited prior art, accompanied with a statement that applicant’s arguments against that prior art have been considered but are unpersuasive. Rejections of this type should be extremely rare and should make your and your attorney’s blood boil.
You do not need to understand the intricacies of the patent law to judge the character of your patent attorney. On one hand, a patent attorney who apathetically informs you of a rejection and asks for money is a paper-pusher. On the other hand, a patent attorney who takes every rejection to heart is your counselor and ally. A winning patent attorney will not only provide a strategy that is designed to unequivocally overcome the rejection, but will also do everything in his power to ensure that the provided strategy succeeds.
Recently, Smith & Hopen partner Nicholas Pfeifer was prosecuting a patent application involving an important medical invention. The examiner assigned to the case was exceptionally uncooperative. Unwilling to accept examiner’s unjust refusal, Nick personally flew to Washington D.C. to meet with the examiner. When that meeting still did not yield the intended result, Nick immediately escalated the situation to a Supervisor Patent Examiner (SPE), requesting a detailed review of the case. This led to several subsequent discussions, presenting Nick with an opportunity to explain his legal position to more experienced examiners. In the end, Nick’s relentlessness paid off: the USPTO granted his client a patent.
Refusing to accept an unjust result is a quality that exemplifies a winning patent attorney. If your patent application is stuck at an impasse, and your patent attorney is milking the situation without delivering results, consider upgrading your legal representation. Don’t settle for less.