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How to Be an Effective Advocate When Responding To Examiners

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“Efficient advocacy shouldn’t be restricted to authorized paperwork filed in courtroom or an administrative attraction…. One of the simplest ways you’ll be able to assist the examiner is by attending to the purpose.”

You’re a patent prosecutor. You’ve simply acquired an workplace motion. The examiner has rejected your claims. You assume the examiner obtained it improper. On the technical points, it seems just like the examiner is off base, mentioning parts within the prior artwork that aren’t actually there, and discovering motivation based mostly upon the flimsiest bases. Additionally troubling is that the examiner has based mostly a number of the rejections upon guidelines or precedent that you simply assume are incorrect, each on their face and as utilized to your claims.

So, it’s time to organize an workplace motion response. Hopefully this can change the examiner’s thoughts and can permit your shopper to obtain a patent. Your response might embrace some preliminary issues, maybe some declare amendments and recitation of the prosecution historical past, and the standing of varied claims.

Then you definitely come to the arguments. You need to argue with the examiner’s selections, to make certain, however that doesn’t imply that you simply need to be unpleasant.

Your job as an advocate is to assist the examiner perceive your shopper’s place.

There are quite a few methods you possibly can apply so as to argue your case in a simpler method. Efficient advocacy shouldn’t be restricted to authorized paperwork filed in courtroom or an administrative attraction. Even when you’re arguing to an examiner, your arguments may be made simpler by the way during which these arguments are introduced.

The Most Essential Precept of Advocacy

Get to the purpose.

One of the simplest ways you’ll be able to assist the examiner is by attending to the purpose. There are some examiners who, when reviewing written responses from patent practitioners, need a solution to this primary query: “If I tousled, are you able to please present me how, and inform me the place, and clarify why?”  Answering this query instantly is what attending to the purpose is all about.

Attending to the purpose carries with it a number of corollaries, comparable to…

Be Direct With out Being Rude

It isn’t discourteous to get to the purpose. Some patent practitioners assume it’s impolite or brusque to get to the purpose too shortly. Consequently, they embrace a little bit of language of their written responses to make it appear as if they don’t want to sound overly important, nor do they need to offend the examiner.

Executed correctly, attending to the purpose is just not offensive. It isn’t as if you’re belittling the examiner’s intelligence or questioning the examiner’s parentage. Attending to the purpose is, somewhat, addressing the essential query that many examiners have. Simply be courteous and professional when you get to the purpose.

Be Clear and Terse at First

Attending to the purpose requires you, as an advocate, to plainly state what the purpose is. Typically, the essential level might be expressed as a brief, easy sentence. There must be little question as to the place you and your shopper are taking over a problem.

The longer and extra convoluted the purpose is, the extra complicated it’s. Usually talking, you can’t persuade an individual by complicated the individual that you’re making an attempt to influence.

Attempt to make some extent as a single level. Typically advocates conflate disparate factors right into a single argument. It might occur, for instance, that the examiner attracts one conclusion that’s misguided for 3 totally different causes. Or it might occur that there are there are a number of associated—however however distinct—errors. In such instances, name out every of the factors individually and clearly.

After Clearly Making the Level, Clarify It

Make your level first, then clarify it. The reason must be clear, however the rationalization can also be extra detailed. The explanatory sentences could also be longer. Citations to the document and authorized authorities could also be included. And, in fact, the reason must be crafted to help the purpose you need to make.

Don’t “Bury the Lede”

Attending to the purpose signifies that the examiner ought to not need to go in search of the purpose.

Within the enterprise of stories journalism, there’s a precept that probably the most primary parts of a narrative should be provided first, adopted by further explanatory info or particulars. The primary few strains of the story ought to encapsulate the essential thrust of the piece. When a reporter places the small print or explanatory materials within the first paragraph, and places the essential thrust in a later paragraph, that is known as “burying the lede,” and it’s considered dangerous type.

When being an advocate, make your level immediately. When you “bury the lede,” meaning the examiner should go searching round for it, and there’s a vital danger that the examiner might not discover it or might not acknowledge it as the purpose you are attempting to make.

Some advocates have been recognized to actually “bury the lede,” by putting essential factors in footnotes. Factors in footnotes usually tend to be missed or usually tend to be considered unimportant. In case you have some extent value making, you must make it within the physique of your argument. It’s often a good suggestion to keep away from using footnotes altogether.

Some advocates have even been recognized to put the purpose on the very finish of the argument, as if their arguments have been a set of clues that in the long run help the right revealed conclusion. This can be a method applicable for a thriller novel, however it’s to be prevented in authorized paperwork. You don’t need your arguments to be a thriller.

Use Good Headlines

The follow of journalistic methods presents one other useful piece of recommendation for the advocate: write concise, useful headlines to summarize your factors.

A great headline could be very, very terse. It not often exceeds a single line. Some advocates are recognized to pack numerous phrases right into a headline, comparable to “The Examiner Erred And Failed To Meet The Burden Of Proof By Discovering Anticipation Underneath Part 102, Particularly By Concluding That The Jones Reference Discloses Or Suggests An ‘Armature’ As Recited In Declare 1.”  A extra terse model could possibly be this:  “Jones Does Not Disclose An ‘Armature.’”

Good headlines serve various functions. First, they assist you get to the purpose by encapsulating what you need to say. (I’m talking right here of the “old skool” type of headlines, not the “teaser” or “clickbait” headlines that do the other and have emerged within the Web Age. Don’t write something like: “Seven Causes the Examiner Erred:  Quantity Three Will Shock You!”)

A second profit of excellent headlines is that they present how the arguments work collectively. As an example, there could also be situations by which a number of arguments are associated, and the examiner can simply see how they’re associated simply by studying the headlines. One most important argument could also be, for instance, “1. Jones doesn’t disclose all parts of declare 1.”  Beneath this level could also be sub-points with their very own headlines, similar to “a. Jones doesn’t disclose an ‘armature’” and “b. Jones doesn’t disclose an ‘armature spring.’”

A 3rd profit of excellent headlines is that the examiner can get a good suggestion about your place at a look. Simply by studying the headlines, the examiner can see the place you’re coming from. The Examiner is extra more likely to handle your arguments correctly, and is much less more likely to overlook a few of your factors.

Arrange Your Arguments

Your arguments should be laid out clearly and successfully. What constitutes a transparent and efficient format varies from case to case.

Typically arguments might be organized in order that they mirror the examiner’s workplace motion. This may also help the examiner by explaining what arguments apply to which rejections.

As a common rule, it may be useful to argue the extra sweeping factors affecting many claims first, and argue the extra particular factors relevant to particular person claims later.

In lots of instances, the arguments about authorized errors may be developed after the technical arguments, as many examiners are extra attentive to technical factors and are much less more likely to be persuaded by authorized arguments. Essential authorized arguments, even when they’re unlikely to be persuasive to the examiner, however should be made to the examiner. Within the occasion of an attraction, you need it to be clear that the authorized error was preserved for assessment, and that you’re not making an attempt to reverse the examiner on a floor that would have been—however was not—introduced to the examiner.

There could also be conditions by which mirroring the examiner’s workplace motion is just not the most effective course. Maybe the examiner’s complete workplace motion is flawed for causes not talked about by the examiner in any respect. A key cited reference won’t be prior artwork, for instance. In such instances, you might urge arguments that haven’t any corresponding level within the workplace motion.

Keep away from having distinct arguments being disjointed or conflated or in any other case organized in a complicated style.

Argue in The Various

Typically a declare rejection is considered faulty for a number of distinct causes. It may be strategically advantageous to argue within the various that there are, say, 5 distinct the reason why a specific motion is in error, and reversal is so as if any of the 5 causes is legitimate. Put one other approach, you solely have to be proper on one level to reverse a rejection; the examiner needs to be proper on all 5 factors as a way to keep that rejection.

When arguing within the various, make it clear that’s what you’re doing. In any other case, it won’t be clear to the examiner that prevailing upon any single considered one of your factors is adequate to require a reversal.

Use Plain Language

In patent prosecution, many technical and authorized points are troublesome sufficient on their very own. Don’t make them harder through the use of obscure language or by tossing round Latin phrases or by arguing hyperbolically. Your job as an advocate is to not overwhelm the examiner or confuse the examiner or browbeat the examiner, however to assist the examiner.

Some Advantages of Good Advocacy Earlier than Examiners

You may be serving to the examiner, in fact.

Additionally, you will be serving to any reviewing our bodies, which can embrace the Patent Trial and Attraction Board (PTAB), juries, and trial or appellate judges.

You may be serving to your shopper. Many purchasers respect it when their counsel sends them comprehensible paperwork that lay out arguments in an easy and easy-to-follow style.

And you may be serving to your self. You’ll be serving to your self to raised perceive your personal case, however additionally, you will be serving to your self in different methods. For those who make a Response and Argument, step away from it, after which return to it after a number of months, it is possible for you to in a short time to refresh your recollection of your arguments. You may as well decide comparatively shortly whether or not the examiner has responded to your arguments utterly and appropriately.

If it turns into essential to file a doc for evaluate, resembling an attraction temporary or a pre-appeal, your readability and group earlier than the examiner will show immeasurably helpful. You possibly can extra shortly determine your strongest arguments and your bases for evaluate. Within the case of a pre-appeal, the place you’re required to provide a “succinct, concise and targeted set of arguments” and there’s a strict web page restrict (see MPEP § 1204.02), the brief and to-the-point arguments made to the examiner will show you how to make your case extra simply within the allowable area.

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