I just ran across an interesting string of comments over on Patently-O. The actual blog post covers the new United States Patent and Trademark Office Accelerated Examination procedure.
Much more interesting is the colloquy involving whether the name of the inventor or attorney makes a difference in whether the USPTO issues a final rejection of the patent claims. While neither should make a difference, it makes sense that an individual patent examiner might want to avoid locking horns with a patent attorney known for a long unbroken record of successful patent appeals. It is not that an examiner would grant allowance to an invalid patent. A more likely scenario would be that an examiner might determine spending an hour discussing the addition of patentable limitations to the claim might avoid days work of work on an appeal that drops the case right back in the examiner’s lap.
In my case, I have enjoyed considerable success filing appeals. Rather than try to exploit this success, I do not want to develop a reputation for losing any appeals. Appealing only solid cases, and pursuing them with a zealous advocacy has proven to be quite beneficial. I would like to think that if you develop a reputation for only appealing legitimate cases, you end up forced to appeal fewer cases.
When searching for the Best Patent Lawyer in the World, the patent attorney’s record of appeals before the Board of Patent Appeals and Interferences, might just be one of the best questions you could ask.
patent examiner USPTO patent appeal patent attorney
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