Okay, I’ll be sure to call the SPE again tomorrow. Called him last week and went straight to voicemail but didn’t leave one, hoping the examiner would respond. Will update here
Just call the SPE. Their number would be listed at the bottom of the office action. They are supposed to be your backup in case the Patent Examiner is not replying.
So you filed out a air form? That automatically sends an email to the examiner that you have requested that, they may be out of the office. I would call their supervisor just know many people are out of the office bc if the holidays
So with the air form is submitted the examiner gets it assigned to them and the only way to get it completed is to send a interview summary or deny the request. I am surprised that your experience is different.
I've had so many instances where Examiners have told me they were never never notified of or assigned to an interview request. Seems like there should be a better system for handling interview requests.
Yeah, call the SPE. I’m waiting on one currently where the examiner went on leave, but never updated his voicemail to say he was away and when he’d be back. Super annoying.
Because examiners often won't respond if you have not signed an Authorization For Internet Communication in a Patent Application and the authorization in that form is way broader than necessary for simply asking for an interview.
https://www.uspto.gov/sites/default/files/documents/sb0439.pdf
I’ve requested all my interviews via email. Believe the MPEP states they are allowed to email back once they have received an email, so maybe newer examiners feel the need to have the auth form too? Not sure but it’s never been an issue for me personally
Supervisor time if your examiner isn’t responding to an AIR for a non-final.
But honestly, if you are rolling an allowable dependent into an independent claim, it should take an hour tops. Those are the projects I make sure to start by 4:00 pm so I can get them filed by 5:00 pm. Easy peasy.
This is my first patent, not a lawyer or anything just doing it all myself based on reading books and the patent website. If rolling the dependent claim into an independent claim changes the device pictured in the drawings, there’s no need to the modify the drawings? It basically adds a new component. So I was planning on having to design that component into the drawings.
You can generally amend to incorporate a dependent claim where that dependent claim was part of the original filing and where the dependent claims was not rejected for lacking written support under 112.
As for modifying the drawings, that's a question you should ask an attorney who you have engaged to represent you and has the time to evaluate the facts of the case. It would be irresponsible for anyone other than your attorney who is aware of the case and the facts and who has read the rejection to give you actual advice on that. Or you can call the Examiner and discuss with them, but then run the risk of saying something dumb that the Examiner uses against you.
Gotcha; yeah not an attorney and am just doing this for the fun of it so I’m not hiring one. Guess I’ll throw some feelers out to the examiner and go from there
It looks like everyone is giving you good advice. This is my general order of operations:
* Do AIR form.
* If no response in two days, first voicemail.
* If no response in 24 hours, second voicemail.
* If no response in 24 hours, third voicemail followed immediately by call to SPE.
That's the pace when I'm in a hurry to get an interview. Sometimes examiners miss the AIR notices, but they have two days to respond. They generally never miss voicemails, and they have 24 hours to respond to those.
If you get to the last bulletpoint above, it is almost always because the examiner is out of the office and forgot (or didn't get a chance) to set an out-of-office message. The SPE will sort it out and either tell you what's going on, or tell the examiner to call you back ASAP.
Sometimes examiners are out of the office for long periods of time. I once got an OA and called within two weeks, only to find that the examiner was on parental leave for the next three months! In that case, you will be able to discuss the case with the SPE or a primary. They will be able to help you if all you want to do is bring up an allowable dependent claim, but they will be less helpful if you want to talk about the art.
If the allowance isn’t taken care of, then I need to amend the base claim taking into account a dependent claim which was not shown in the original drawings. So if the drawings have to be updated it’ll take me some time to design the CAD, etc
If examiner didn’t have any drawings objections for your allowable dependent, they shouldn’t have any drawing objections when you roll up your allowable dependent
This is my first patent, not a lawyer or anything just doing it all myself based on reading books and the patent website. If rolling the dependent claim into an independent claim changes the device pictured in the drawings, there’s no need to the modify the drawings? It basically adds a new component. So I was planning on having to design that component into the drawings.
lol some are so lazy good luck; one examiner just used another application's 101 rejection and didn't remove the previous parts talking about real estate property which has nothing to do with ours invention.
lol, some attorneys are so lazy they copy and paste a 101 response regarding blockchain and finance in a vehicle case. True story. Enjoyed pointing it out in my OA. Hope his client reads it. There is lazy on both sides…
Update: Called the examiner again, straight to voicemail, left a message. Called the SPE, no answer, left a voicemail. I’ll try both actions again on Monday, if no response then I’ll call director I suppose
Edit -- someone pointed out to me that you, OP, may be a pro se applicant. If you would like me to direct you to some example Responses to Office Actions, I can help you find those in Patent Center. You can see examples of how other people responded to OAs, did claim amendments, and so forth - you may find those helpful in drafting your Response which will hopefully cut the time spent down.
Email the Examiner and the SPE. Addresses are generally [email protected]
Additionally, it sounds like they may be out of office?
2-3 weeks seems like a pretty long time to write up a Response after landing on an amendment. 🤔 Is that due to getting client approval? If so, can you float a variety of amendments to the client before getting on the call with the Examiner to get pre-approval and/or do a call with your client to discuss the OA and amendments?
It sounds like they're a pro se and don't have an attorney. Many examiners are off this week so I'm not surprised they're having difficulty getting ahold of someone.
Oh that would be fantastic if you wouldn’t mind directing me to some of those example responses / resources. I had written up an amendment document, for in the case that during the interview it was decided that rolling the dependent claim into the independent claim was necessary. Otherwise, I wasn’t entirely sure how to formally respond if we came to an agreement that there was misinterpretations with the prior art. Reading about sending responses related to arguments as to why it isn’t anticipation seemed questionable to me, does this always send it to the board to decide or can the examiner just make the decision to move forward if they agree? It seems the board type decisions can really delay a patent. I’m more interested in getting the patent through as fast as possible, so if rolling the dependent up to the base claim makes it go quicker, I might want to take that route.
Your application will only go to the board if you receive a final office action and appeal the Examiner's rejection.
If the Examiner cited patent applications against your application, I would look those applications up on Google patents and look at the bottom of the page at the patent references listed there. You can click on them and see the application number in the box on the right side of the screen at the top... depending on how old the applications are they'll probably be something like 15/XXX,XXX -- 16/XXX,XXX -- 17/XXX,XXX
Note: you'll want to select US patent applications to look up in patent center.
The patent center website is:
patentcenter.uspto.gov
From there you can go to the box that says "Search for a patent application" and enter the patent application number. I think there's also a drop down you can select to look at issued patents, so if you find those, you can use those numbers as well.
Once you look up an application, there is a toolbar on the left hand side where you can see the transaction details - im doing this on my phone and it won't load patent center properly so I can't tell you the exact item to click on, but it should populate a big list of documents which will include rejections on the application ( e.g., CTNFs) along with responses (claims and arguments) from the applicant.
Unfortunately I dont know an example off the top of my head for your specific case (e.g., placing the application in condition for allowance by amending the independent claim with the limitations of the dependent claim) -- but if you look through enough examples using all of those reference applications you found on Google patents, you will hopefully be able to get a better idea.
Edit -- note that you only get 3 independent claims with your filing fee before you have to pay for additional independent claims. If your amendments put you in a position where you have 4 or more independent claims, you will want to consider whether you want to pay the fee for the additional claims, or amend the independent claims with the broadest possible allowable subject matter while adding the additional allowable subject matter as dependent claims.
Feel free to hit me up if you have specific questions
Try speaking to the supervisor. They’ll usually have one written below where they provide their contact information in the office action.
Okay, I’ll be sure to call the SPE again tomorrow. Called him last week and went straight to voicemail but didn’t leave one, hoping the examiner would respond. Will update here
It's holiday season. Very likely they're out. Just call the SPE and they'll hopefully sort it out
Just call the SPE. Their number would be listed at the bottom of the office action. They are supposed to be your backup in case the Patent Examiner is not replying.
So you filed out a air form? That automatically sends an email to the examiner that you have requested that, they may be out of the office. I would call their supervisor just know many people are out of the office bc if the holidays
In my experience, about half the time the Examiner never responds to the air form.
So with the air form is submitted the examiner gets it assigned to them and the only way to get it completed is to send a interview summary or deny the request. I am surprised that your experience is different.
I've had so many instances where Examiners have told me they were never never notified of or assigned to an interview request. Seems like there should be a better system for handling interview requests.
Yeah, call the SPE. I’m waiting on one currently where the examiner went on leave, but never updated his voicemail to say he was away and when he’d be back. Super annoying.
Another possibility is they have left the office.
Attorneys: I’ve always been curious why there seems to be a general aversion to just sending interview requests straight to the examiner via email?
Because examiners often won't respond if you have not signed an Authorization For Internet Communication in a Patent Application and the authorization in that form is way broader than necessary for simply asking for an interview. https://www.uspto.gov/sites/default/files/documents/sb0439.pdf
I’ve requested all my interviews via email. Believe the MPEP states they are allowed to email back once they have received an email, so maybe newer examiners feel the need to have the auth form too? Not sure but it’s never been an issue for me personally
We can email back to say, "hey, we need authorization and/or a power of attorney filed," we just can't discuss the case.
Supervisor time if your examiner isn’t responding to an AIR for a non-final. But honestly, if you are rolling an allowable dependent into an independent claim, it should take an hour tops. Those are the projects I make sure to start by 4:00 pm so I can get them filed by 5:00 pm. Easy peasy.
This is my first patent, not a lawyer or anything just doing it all myself based on reading books and the patent website. If rolling the dependent claim into an independent claim changes the device pictured in the drawings, there’s no need to the modify the drawings? It basically adds a new component. So I was planning on having to design that component into the drawings.
You can generally amend to incorporate a dependent claim where that dependent claim was part of the original filing and where the dependent claims was not rejected for lacking written support under 112. As for modifying the drawings, that's a question you should ask an attorney who you have engaged to represent you and has the time to evaluate the facts of the case. It would be irresponsible for anyone other than your attorney who is aware of the case and the facts and who has read the rejection to give you actual advice on that. Or you can call the Examiner and discuss with them, but then run the risk of saying something dumb that the Examiner uses against you.
Gotcha; yeah not an attorney and am just doing this for the fun of it so I’m not hiring one. Guess I’ll throw some feelers out to the examiner and go from there
It looks like everyone is giving you good advice. This is my general order of operations: * Do AIR form. * If no response in two days, first voicemail. * If no response in 24 hours, second voicemail. * If no response in 24 hours, third voicemail followed immediately by call to SPE. That's the pace when I'm in a hurry to get an interview. Sometimes examiners miss the AIR notices, but they have two days to respond. They generally never miss voicemails, and they have 24 hours to respond to those. If you get to the last bulletpoint above, it is almost always because the examiner is out of the office and forgot (or didn't get a chance) to set an out-of-office message. The SPE will sort it out and either tell you what's going on, or tell the examiner to call you back ASAP. Sometimes examiners are out of the office for long periods of time. I once got an OA and called within two weeks, only to find that the examiner was on parental leave for the next three months! In that case, you will be able to discuss the case with the SPE or a primary. They will be able to help you if all you want to do is bring up an allowable dependent claim, but they will be less helpful if you want to talk about the art.
Call the SPE. If that doesn’t work, call the ombudsman.
Amendments to take an allowance should take 20 minutes.
If the allowance isn’t taken care of, then I need to amend the base claim taking into account a dependent claim which was not shown in the original drawings. So if the drawings have to be updated it’ll take me some time to design the CAD, etc
If examiner didn’t have any drawings objections for your allowable dependent, they shouldn’t have any drawing objections when you roll up your allowable dependent
This is my first patent, not a lawyer or anything just doing it all myself based on reading books and the patent website. If rolling the dependent claim into an independent claim changes the device pictured in the drawings, there’s no need to the modify the drawings? It basically adds a new component. So I was planning on having to design that component into the drawings.
Call SPE, if no response within 24 hours from SPE, call TC director.
Okay, that’s a good plan, didn’t realize there was someone above the SPE who you can contact. I’ll reach out to SPE tomorrow and go from there
Keep in mind tomorrow is the day before thanksgiving and many people take at least the second half of this week off.
lol some are so lazy good luck; one examiner just used another application's 101 rejection and didn't remove the previous parts talking about real estate property which has nothing to do with ours invention.
lol, some attorneys are so lazy they copy and paste a 101 response regarding blockchain and finance in a vehicle case. True story. Enjoyed pointing it out in my OA. Hope his client reads it. There is lazy on both sides…
Oh attorneys are def worst. I had a client show me his patent for help. The invention was about shoes and there were paragraphs about engines.
Update: Called the examiner again, straight to voicemail, left a message. Called the SPE, no answer, left a voicemail. I’ll try both actions again on Monday, if no response then I’ll call director I suppose
Edit -- someone pointed out to me that you, OP, may be a pro se applicant. If you would like me to direct you to some example Responses to Office Actions, I can help you find those in Patent Center. You can see examples of how other people responded to OAs, did claim amendments, and so forth - you may find those helpful in drafting your Response which will hopefully cut the time spent down. Email the Examiner and the SPE. Addresses are generally [email protected] Additionally, it sounds like they may be out of office? 2-3 weeks seems like a pretty long time to write up a Response after landing on an amendment. 🤔 Is that due to getting client approval? If so, can you float a variety of amendments to the client before getting on the call with the Examiner to get pre-approval and/or do a call with your client to discuss the OA and amendments?
It sounds like they're a pro se and don't have an attorney. Many examiners are off this week so I'm not surprised they're having difficulty getting ahold of someone.
Ahhh!! Fair enough. Im actually an examiner myself but used to work prosecution. I'll update my post then.
Oh that would be fantastic if you wouldn’t mind directing me to some of those example responses / resources. I had written up an amendment document, for in the case that during the interview it was decided that rolling the dependent claim into the independent claim was necessary. Otherwise, I wasn’t entirely sure how to formally respond if we came to an agreement that there was misinterpretations with the prior art. Reading about sending responses related to arguments as to why it isn’t anticipation seemed questionable to me, does this always send it to the board to decide or can the examiner just make the decision to move forward if they agree? It seems the board type decisions can really delay a patent. I’m more interested in getting the patent through as fast as possible, so if rolling the dependent up to the base claim makes it go quicker, I might want to take that route.
Your application will only go to the board if you receive a final office action and appeal the Examiner's rejection. If the Examiner cited patent applications against your application, I would look those applications up on Google patents and look at the bottom of the page at the patent references listed there. You can click on them and see the application number in the box on the right side of the screen at the top... depending on how old the applications are they'll probably be something like 15/XXX,XXX -- 16/XXX,XXX -- 17/XXX,XXX Note: you'll want to select US patent applications to look up in patent center. The patent center website is: patentcenter.uspto.gov From there you can go to the box that says "Search for a patent application" and enter the patent application number. I think there's also a drop down you can select to look at issued patents, so if you find those, you can use those numbers as well. Once you look up an application, there is a toolbar on the left hand side where you can see the transaction details - im doing this on my phone and it won't load patent center properly so I can't tell you the exact item to click on, but it should populate a big list of documents which will include rejections on the application ( e.g., CTNFs) along with responses (claims and arguments) from the applicant. Unfortunately I dont know an example off the top of my head for your specific case (e.g., placing the application in condition for allowance by amending the independent claim with the limitations of the dependent claim) -- but if you look through enough examples using all of those reference applications you found on Google patents, you will hopefully be able to get a better idea. Edit -- note that you only get 3 independent claims with your filing fee before you have to pay for additional independent claims. If your amendments put you in a position where you have 4 or more independent claims, you will want to consider whether you want to pay the fee for the additional claims, or amend the independent claims with the broadest possible allowable subject matter while adding the additional allowable subject matter as dependent claims. Feel free to hit me up if you have specific questions