Let’s say the examiner gives you the thumbs down on all or some of your claims. Your next move if you want to continue pursuing the patent is to respond, specifically pointing out the supposed errors in the examiner’s action. Patent examiners have a lot on their plates, and their units are typically understaffed for the amount of work they handle. When you respond to an examiner, keep the following in mind:

Examiners must process a specific number of patents to be considered productive by their superiors for periodic job performance ratings. The bottom line is that as careful as they try to be, they make mistakes that can be reversed with careful and cogent argument by you as a pro se inventor, or together with your attorney.

Your response should address every ground of the objection and/or rejection. Show where the examiner is wrong. The mere allegation that the examiner has erred is not enough. Do not be timid about it if you feel he or she has made a mistake.

Upon receiving your response, the examiner will reconsider, and you will be notified if the claims are rejected, or objections or requirements made, in the same manner as after the first office action examination. This second action usually will be the final one.

If you are a pro se inventor, feel free to call your examiner on the telephone to discuss your case. His name and number will be on the office action. I have always found examiners to be most hospitable and helpful.

If you are represented by patent counsel, typically the examiners will not entertain your calls or visits without counsel. This is the way it is. I know there are good reasons for it, but I am a bit cynical and feel the rule not to see inventors without their lawyers was done to keep the lawyers’ revenue stream coming in! Over the years, I have gone more than a few times to meet with an examiner. My lawyer typically sits there while we make our points. No one is more passionate than the inventor, and who knows the product best? The inventor, of course. But this is the way it is.

Once, an examiner refused to allow me to come in alone unless I dismissed my patent attorney. So I called the lawyer up, explained the problem, and took him off the case. In this instance, I felt confident that I had the argument and saw no reason to pay patent counsel more money for unnecessary meetings. I went, I saw the examiner, I won the point, and my patent issued. Then I rehired the attorney.

Whether you go alone or with your attorney, don’t drop in unannounced. It is to your benefit that the examiner have the time to prepare for your visit and get up-to-speed on the case. Remember that personal interviews do not remove the necessity for response to USPTO actions within the required time, and the action of the USPTO is based solely on the written record.