An examiner’s amendment is an office action where the examiner amends the patent application upon authorization of the applicant. Normally, the applicant is responsible for amending the application to overcome any objections and rejections from the examiner. However, in this case, the examiner is amending the application.
Why would the examiner make an examiner’s amendment?
Examiner’s amendments typically occur when the application is almost in condition for allowance. The examiner gives the applicant a telephone call and asks if the patent application (e.g., the claims) could be amended. It’s a kind of mini Examiner’s Interview. These amendments to the claims would bring the application into condition for allowance. The applicant must authorize the examiner to make the examiner’s amendment.
How should you respond when asked to authorize the examiner’s amendment?
At first, you should listen to the examiner’s suggested changes, then ask the examiner for 1 or 2 days to consider the changes. During that time, you should independently review the suggested amendments.
Now, it’s great news that the examiner believes that the application is close to being in condition for allowance. It’s even greater news that the examiner has suggested amendments that will bring the application into condition for allowance.
But, is it fantastic news? It depends on whether the suggested claim amendments are too narrow.
Oftentimes, the claim amendments suggested by the examiner are too narrow. The examiner’s job is NOT to allow the broadest claim possible. The examiner is supposed to examine the application for novelty and nonobviousness, not the breadth of the claims. The examiner has no knowledge of the applicant’s business. Which feature of the product ought to be patented? Frankly, they don’t exactly know what is too narrow for the applicant.
As such, a short negotiation with the examiner can occur during that telephone call or a follow-up one. It’s important that you have a good patent attorney that can quickly do that negotiation so that the claim amendment suggested by the examiner isn’t too narrow. Oftentimes, you can negotiate small changes to the examiner’s suggested claim amendments which have a big impact on the claim scope. But, you have to do it quickly. The quicker the better.
Everything is done over the phone or email. You don’t need to submit any documents on the USPTO website.
How much time do you have to negotiate with the examiner?
After receiving the telephone call from the examiner, you typically have less than a week to negotiate the claim amendments with the examiner. A week would be very slow for the examiner. Typically, they want a yes or no answer within one or two days. Preferably, they would like to have an answer that day or the next. They are on a production schedule and need to get office actions out.
What not to do when you negotiate the claims with the examiner?
Do not argue with the examiner over the scope of the claims for too long. Let them know how you would like to adjust their suggested claim amendments to broaden the claims. If you cannot come to an agreement with the examiner then ask for a written office action.
The examiner is on a production schedule and must generate so many office actions per month. The examiner called you as a courtesy to expedite the allowance of the application. If you continue to argue with the examiner, you are slowing down their production schedule. Next time, they will be less willing to give you a call to negotiate the scope of the claims.
Should you accept claims amendments that narrow the claims too much?
The goal of the applicant is to receive the broadest claim possible. The applicant wants to stop as many competitors from producing a competitive product. However, there is more than one way to receive the broadest claim possible.
You can try to get the broadest claim possible right now. However, you can also work towards getting the broadest claim possible later by filing a continuation patent application.
You would accept the suggested claim amendments by the examiner or ask for adjustments to get a patent even if they are narrow. By doing so, you can say that your product is patented. At the same time, broader claims can be sought through the continuation patent application.
You can have your cake and eat it too.