As we tirelessly continue to battle the USPTO, the response from those around us, the patent attorneys, patent agents, engineers, and finally examiners, some deeply humble and some may leave us a rabbit hole.
The reasons for allowance (ROA) may be one of them, as we fought hard for reclaiming the rights of our clients, there might be a dent in final fruit. The ROA is the examiner’s statement explaining the findings of patentability for the claimed invention, and the courts do consider examiners’ statements of reasons for allowance, thus clarity of the record will assist the courts and the public in assessing the extent of the rights being granted, which is perfectly reasonable and should be encouraged.
As 37 C.F.R. 1.104(e) state: If the examiner believes that the record of the prosecution as a whole does not make clear his or her reasons for allowing a claim or claims, the examiner may set forth such reasoning... One of the primary purposes of 37 C.F.R. 1.104(e) is to improve the quality and reliability of issued patents by providing a complete file history which should clearly reflect, as much as is reasonably possible, the reasons why the application was allowed.
The USPTO guideline of what a Statement of Reasons for Allowance should Include, but not limited to as follow:
(1) The major difference in the claims not found in the prior art of record;
(2) The reasons why that difference is considered to define patentably over the prior art of record; and
(3) Any reasons other than prior art issues, such as why rejections under 35 USC 112 or 101 were overcome and withdrawn.
Thus, this ROA provides a clear and succinct views from the examiner on what the invention is about, on another hand, will such clear and succinct views deliver the original thought of the inventor?
Moreover, ROA reflects that the prosecution is not as clear as the examiner wants them to be, otherwise there is no reason to write another one, given the ROA is not mandatory. In addition, the reason needs to be filled and to makes the record clear, why? It probably denotes the reason why such application be allowed and not being discussed, at least from the examiner point of view. Just in case, one day you are in the court, and arguing different than the reasons given from ROA, good luck to you. So as far, take a close look of the ROA, talk to your clients again to make sure, indeed it is what you all are claiming and willing to take that scope for the rest of approximate 20 years.
However, ROA is not the only one out there, as couple of interview summary may stand in the middle of prosecution history, which will also be fully consider during litigation, as we can derive from the Warner-Jenkinson v Hilton Davis case, prosecution of history become critically important.
We shall quietly and absolutely guard ourselves against those actions may harm us in the future, but to those who have shown us such warm and kindness in one of our darkest chapters, keep patenting.
Note – this is not legal advice. It's intended to be a general introduction to the topic of patent, copyright, and trademark. If you have specific questions, I highly recommending consulting a lawyer. © 2020 Fan Ng