When to Call your Examiner

Inventors and attorneys of record can call Examiners with questions about pending applications. You can call the Examiner at any point in the examination process, and calls do not incur extra USPTO fees. I can personally attest that Examiners make for pleasant conversation, and that there is nothing scary or complicated about Examiner phone calls. However, for maximally efficient examination it’s best to restrict calls to ones that will provide valuable information.

Before a rejection, you could call to gauge your position in the queue. Applications take a long time to process; you might not hear from the USPTO for two years after you submit your application. For a rough estimate, you or your attorney of record can also check Private Pair for the USPTO’s prediction of your first Office Action. You also might want to know your actual position in the queue if someone is infringing on your idea, and you’re wondering whether to file for accelerated examination. In such cases, calling can help you plan or budget.

After a rejection Office Action, you could call to improve your chances of submitting a response that leads to an allowance. If you’re lucky and it’s a clear Office Action with directions on what to fix, you would call to discuss the Office Action and confirm that following those directions will get you an allowance. If it’s a particularly complex Office Action, you would call to set up an Examiner’s Interview to clarify issues brought up in the Office Action, and potentially secure an Examiner’s Amendment.

My clients often ask me to call the Examiner to follow up on pending applications, hoping to get projected dates for USPTO responses. However, Examiners have incredibly crowded dockets and are unable to predict with such accuracy when they will issue your next Office Action. In fact, disturbing the Examiner with multiple follow-up calls may delay examination. Also, if you have filed or plan to file multiple patent applications within the same field, you may well get the same Examiner for multiple applications. Antagonizing the examiner could not possibly smooth your way to allowances.

Choosing your Patent Practitioner: Agent or Attorney?

What are the first steps for patenting your latest invention?  To find out, you probably want to meet with a patent attorney.  But what’s your intellectual property protection budget?

Patent attorneys have the technical background and Patent Bar credentials of a patent agent, but have three years of law school and State Bar passage on top of it.  They’re authorized to do everything: draft your patent, correspond with the USPTO, sue that competitor of yours who totally reverse-engineered your patented invention, and give you legal advice if someone tries to purchase your idea.  But they typically charge by the hour – for everything.  Even the smallest law firms charge over $8000 to draft and file a full nonprovisional patent application, and this usually doesn’t include fees for illustrations, phone calls, and emails.  Patent attorneys are expensive; they rightly capitalize on their degrees and qualifications to charge attorney rates.

You wouldn’t take a Ferrari to pick your grandma up from the airport, would you?  She won’t even notice the ride, and you’ll be paying an arm and a leg for premium gas and rental insurance. At the early stages of your startup business, you don’t need litigation or acquisition legal services. You need to cement your intangible assets by patenting whatever’s patentable.

Patent agents are not legal powerhouses – we’re more like Hondas.  We practice only patent prosecution – meaning we can only help you obtain that patent, and can’t represent you in court if you sue an infringer.  We are focused practitioners who work to keep your patent protection costs low.

The future business value of the granted patent depends on the way your application is drafted, and, at the end of the day, patent applications are best drafted by lean, focused technical writers who understand your business and keep everyone involved in the learning process.  

If you are a startup seeking patent protection or if you are just on a strict budget, a patent agent may be your answer.  Request a free consultation to talk to a patent agent today.