It’s true: examiners generally reject most patent applications. While most rejections can be overcome by amending the claims, this creates a problem: narrowing the scope of coverage. So, should you argue against the rejection or narrow the claims?

It should come as no surprise that we do not initially look to amend the claims. Arguing can be, and often is, effective against many rejections. Why? Because examiners often make mistakes – misinterpreting what the claims are about, incorrectly applying the law, or ignoring claim limitations. So the first thing we do is look for examiner errors.

Crafting a successful argument requires gaining an understanding about what is really bothering the examiner about the claims. It’s surprising how often their real concern is not clearly stated in the rejection. So we need to be “Examiner Whisperers” to zero in on what the rejection is about.

By understanding the basis of / motivation for making the rejection, we can develop an effective argument that directly addresses the examiner’s concern and why it’s incorrect. By pointing out mistakes strategically and persuasively, we can also avoid narrowing the claims.

In cases where the examiner has not made a mistake, we craft the most effective amendment.