The Myth that the Patent Examiner is Awful

There is a huge myth that patent examiners are a lazy group of unionized government bureaucrats who are out to get you.

The truth is that patent examiners – more likely than not – know more about a specific technology than anyone on earth.

They spend their days searching, reading, and understanding a very narrow sliver of technology – and nobody knows it better than they do.  Certainly, nobody will know the prior art better.

Lazy patent attorneys often tell their clients that the examiner is ignorant and does not understand the invention – when in fact it is usually the patent attorney who does not understand the invention.

The examiner can be a huge resource for a competent patent attorney.

First: the patent attorney actually needs to understand the invention (this is not trivial.)

Second: the patent attorney needs to write a patent application that does not “hide the ball” behind complex, terse, and impossible-to-understand legalese.  Some inventors mistakenly think that this is a good thing – let me assure you it is not.

Third: you need to ask for reasonable claims.  The old patent attorney trick of telling the inventor “we are going to get broad claims” is purely a marketing ploy to keep prosecution open as long as possible (and keep the cash flowing to the attorney.)

Fourth: treat the examiner like the expert that they are.  Appeal to their knowledge and ask for help.  Most of them – virtually all (although there are some bad apples) – will help when they can.

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