Sorry Supreme Court, but attacking patents at the PTAB does not impact the patentability of later developed inventions.
As we have discussed previously, some cases can be very difficult to prosecute because of the assigned examiner. Today, patent practitioners can have a good window into the situation well in advance through the use of examiner statistics, but those do nothing to change the situation in and of themselves.
So what about getting the case re-assigned? It turns out that this is a herculean task and most attempts are an exercise in futility. The mechanism to achieve reassignment generally involves a Petition (typically decided by the Group Director via one of their delegates), and usually requires that the applicant prove some sort of bias or improper behavior by the examiner or supervisor. Further, the Office typically limits relevant facts only to the specific case in which the petition is filed. That means that statistics showing the examiner is unreasonable compared to the average examiner in the art unit is likely to be dismissed as irrelevant (and further may actually help the Office by showing the examiner is not biased against the particular applicant/application - rather the examiner is difficult for every applicant!).
Likewise, arguments that the examiner does not understand the technology, or is being unreasonable in interpreting the prior art, are also typically dismissed. According to the Office, mere differences in opinion or other substantive issues are meant for an appeal to the Board, and are not relevant to showing bias or improper action on the part of the examiner or supervisor.
If the applicant is unhappy with the initial petition decision via the Group Director, the applicant can also request a review via a second petition under 37 CFR 1.181 to exercise supervisory review over the decision of the TC Director. Typically, these second petitions are delegated to the Office of the Deputy Commissioner for Patent Examination Policy. See MPEP § 1002.02(b).
A couple examples show how difficult it can be for an applicant alleging improper conduct by the examiner. Consider serial numbers 13/4 70,696 and 14/619,334. The decisions by the Deputy Commissioner in each case are here and here.
While it is difficult to find cases in which petitions to reassign to a new examiner are successful, they do exist. One example of a successful approach is where an examiner repeatedly re-opens prosecution responsive to multiple appeal briefs over many years. Another example is where an examiner left voicemails with the attorney of record evidencing a clear bias.
However, even when it might be possible to win a petition to obtain a new examiner, be careful what you wish for because you just might get it. There is no guarantee that a new examiner will be better.
So, if you find yourself considering a request for a new examiner, make sure you have assembled your evidence and can make a strong showing of improper examiner action. If not, focus your efforts on finding a way forward with the assigned examiner and supervisor as best as you can.
The Holiday Season brings a special time of the year where we can take a breath and reflect on the past. Some things that help take us back are re-airings of old TV shows we watched growing up. My favorite holiday TV show was always the classic stop animation “Rudolph the Red-Nosed Reindeer.” How could you not love all those characters, like Hermey the elf, and Yukon Cornelius, the "greatest prospector of the North"? And who could forget the Bumble - he was terrifying and gave me nightmares growing up. As we all know, in the story, Hermey (who wants to be a dentist instead of an elf) removes all of the Bumble’s teeth after luring him out of a cave (and saving Rudolph and his family) by oinking like a pig.
In patent prosecution, some examiners and/or supervisors who make life overly difficult (and who unfortunately are intent on rejecting applications no matter what) can be a lot like the abominable snow monster. The heroes in this analogy are our inventors, who like Rudolph, try their best but often end up getting knocked out with a stalactite by the Bumble. It is therefore often up to the nerdy patent prosecutor, who like the nerdy little elf, must come up with a plan to de-fang the Bumble.
To that end, we have provided our Holiday Suggestions to help all the Hermeys out there reform the Bumbles of the USPTO. Each of these topics is discussed in various other blog posts on our site, so feel free to search around if it seems like any of these suggestions might be helpful to you.
Restrictions - unreasonable examiners often use restrictions to make an applicant’s life overly difficult due to either a desire to do as little work as possible, or in the hopes of wearing down the applicant and limiting their scope and ability to amend. However, patent prosecutors should incorporate restriction traversals and petitions into their patent prosecution strategy in order to turn the tables on these examiners and increase the applicant’s leverage. We have many posts on how to fight restrictions and how to successfully petition. An applicant can win these battles, if needed, more often than traditional thinking suggests. Don’t go after the Bumble in his own cave and try to fight on his turf like Rudolph - turn the tables - traverse, amend, petition, …
Some examiners are so bent on rejecting an application that they can make statement and do activities that actually help the applicant in the long run. So, when you find yourself in a situation where the examiner is un-convinceable (because they have no intention of giving a fair examination), stop trying to convince them. Consider how you can force them into extreme and unreasonable positions. Think about Hermey luring the Bumble out of the cave by oinking like a pig - Bumbles love pork!
At the same time, do not let unreasonable examiners lead you down the primrose path. Unreasonable examiners who intend to reject no matter what rely on applicants presuming that the examiner is reasonable. Use examiner statistics (like bigpatentdata.com) to know from the first action how the examiner operates and do not get lulled into complacency. Likewise, do not let the examiner lead you into the swamp with side issues. Those are designed to distract the applicant in the hopes the applicant makes some sort of statement or admission that can lead to even more rejections. Don’t let the Bumble get the upper hand and knock you out with a stalactite because you are distracted.
Play the long game and focus on winning at the PTAB. If the examiner or their supervisor is intent on rejecting no matter what, stop trying to convince them and instead focus on the eventual appeal. Make sure you have all your claims exactly as you would like them before the PTAB. Get all of your evidence in the record. Minimize wasted RCEs and appeal early. Be ready for the examiner and their supervisor to re-open prosecution and use it to your advantage to paint them as unreasonable. Maybe you will get lucky and your Bumble will be reformed without requiring multiple appeals!
Of course, it goes without saying that at the end of the day you need to know the prior art better than anyone else does. All of these tactics require that you have a strong invention with claims that differentiate the state of the art. Your strategy should be solid even if the examiner and supervisor change which part of a reference is being cited, or change how the references are being combined.
So, hopefully when you find yourself facing an unreasonable Bumble showing big scary teeth, you can be like Hermey and remember that the Bumble is not so scary after all - you just need to remove those scary teeth.
As a quick aside, “Rudolph the Red-Nosed Reindeer” had its own intellectual property issues, as noted by Wikipedia:
The copyright of the Rudolph the Red-Nosed Reindeer special lies in an area of uncertainty in regard to American federal copyright law. When the recording was originally published, the date of copyright (published in Roman numerals) was accidentally listed as 1164 (MCLXIV), omitting an M that should have been present (1964 in Roman numerals is MCMLXIV); this mistake was not corrected with subsequent edits and remains on televised prints to this day….
Assuming the error in the copyright is considered substantial enough to invalidate it (U.S. copyright law before 1988 required works to have a valid date on a copyright notice, while providing some leeway in regard to non-substantial errors), the error puts large portions of the special not directly tied to the songs or original story into the public domain. …