“I’ll Allow It…”

Today we had a class on interview practice and one on allowances. The interview class was partially repetition, since we have covered interviews to some extent in prior lectures, and because many people have already conducted interviews by now.

Our class on allowances covered the procedure for checking that a case was in condition for allowance in terms of formalities and in terms of interference. As I’ve covered before, objections point out a conflict with a rule or a formal matter with the application. A title that isn’t descriptive, for example, or an abstract that is too long. Rejections indicate conflicts with the patent laws themselves. There are cases where an application conflicts with none of the statutes (it is enabled etc under 112, falls into a statutory category and does not otherwise conflict with 101, has no prior art under 102 or 103 that could be used against it, etc) but has some formal issues. Some of these can be taken care of by an examiner’s amendment to the application, and some of them must be taken care of by the applicant or applicant’s representative.

We also covered good practice in terms of writing reasons for allowance and making the record (including search histories) clear. Examiners often write up an explanation of why the application was allowed, called the “reasons for allowance”. This is important because it is the final opportunity for the examiner to explain on the record what distinguishes the invention from the prior art. After all, it is unlikely there is nothing anywhere even similar to what is claimed. So the examiner should explain what feature or features make the instant application different from what is known in the art. In first action allowances, reasons for allowance are the only real prosecution history there is, so the examiner should clearly set forth his or her reasons for going straight to allowance. And of course, it is improper for an examiner to narrow the scope of the claims in the reasons for allowance; that is, examiners don’t get to make claims mean what we’d like them to mean just so they can get pushed out the door.

We also briefly went over making our search histories complete, which may be a somewhat neglected art. That is, while examiners often do thorough searches, if those searches aren’t detailed in the search history, there is no record of them for the public or the courts to refer to. EAST and WEST make it easy to supply this history when searching the patent databases, but it can be more difficult when searching non-patent literature to keep an accurate record of the search performed.

Finally, we discussed interferences briefly. I’ll put off that topic until we have our lecture on it, tomorrow.


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