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Author Topic: Retracting assent to examiner's amendment?  (Read 387 times)

Robert K S

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Retracting assent to examiner's amendment?
« on: 01-10-17 at 12:34 pm »

Following an amendment after non-final rejection in an application with foreign inventors, an examiner has proposed rolling up some dependent claims into the independent claims to place the application in condition for allowance.  The foreign associate is worried that the inventors will not be able to be timely reached to approve the amendments, and wonders whether it would be better to:

a. Tell the examiner, okay, enter the amendments, but then later reneg on that approval if the client later does not accept the narrowed scope of the amended claims, or
b. Just tell the examiner, sorry, we can't approve the amendments at this time, you're going to have to write up a final rejection or allow the claims as presented.

Would appreciate some feedback, especially from examiners, as to the effect on the examiner as well as the procedural mechanics of (a).
« Last Edit: 01-10-17 at 12:39 pm by Robert K S »
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Tobmapsatonmi

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Re: Retracting assent to examiner's amendment?
« Reply #1 on: 01-10-17 at 12:47 pm »

Not an examiner, but I'd say go with (a) and then from a mechanics standpoint you'd need to file RCE if the narrowed claims presented in the notice of allowance are unacceptable to the client.  (Or convince the client to take them as-are, and file con to claim other embodiments?)
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lazyexaminer

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Re: Retracting assent to examiner's amendment?
« Reply #2 on: 01-10-17 at 12:51 pm »

Agree with the above. If you agree to an examiner's amendment I assume you are going to get a Notice of Allowance fairly quickly. So then the amendment is entered. If you want to reneg on that you would need another amendment to go back to the prior form I guess. Now you're under rule 312, and no way the examiner will enter it. So you can file an RCE if you haven't paid the issue fee yet. You're probably then risking a first action final if you just go back to the prior form (though I haven't thought about that issue at all and could be wrong).

If you can get in touch with the examiner to reneg before the allowance actually goes out then I assume then you are just moving to case b and he'll send a final.
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Robert K S

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Re: Retracting assent to examiner's amendment?
« Reply #3 on: 01-10-17 at 01:09 pm »

If we make the examiner write up a final rejection, do you think the examiner will be less inclined to enter the currently proposed amendment as an after-final amendment?
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smgsmc

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Re: Retracting assent to examiner's amendment?
« Reply #4 on: 01-10-17 at 02:14 pm »

Following an amendment after non-final rejection in an application with foreign inventors, an examiner has proposed rolling up some dependent claims into the independent claims to place the application in condition for allowance.  The foreign associate is worried that the inventors will not be able to be timely reached to approve the amendments, and wonders whether it would be better to:

a. Tell the examiner, okay, enter the amendments, but then later reneg on that approval if the client later does not accept the narrowed scope of the amended claims, or
b. Just tell the examiner, sorry, we can't approve the amendments at this time, you're going to have to write up a final rejection or allow the claims as presented.

Would appreciate some feedback, especially from examiners, as to the effect on the examiner as well as the procedural mechanics of (a).

I've been in this situation mucho times.  The scenario typically arises when the examiner is short on counts for the biweek or quarter and offers a K-Mart blue light special.  If the client specifically requires that in-house counsel or the inventors review and approve amendments, and if I do not have time for the client to do that before the blue light goes out, I will decline the offer.  I would never intentionally put myself in the position in which I might have to reneg.

Of course, some Examiners will exact revenge. I had several in which the next OA threw in 101 Alice rejections for the hell of it. 
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lazyexaminer

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Re: Retracting assent to examiner's amendment?
« Reply #5 on: 01-10-17 at 02:17 pm »

Much of the answer to that question is probably examiner specific. Being "made" to write a final wouldn't affect me, but I don't care about counts and it is a reality that many go fishing for RCEs of course.

It may depend on if there are other dependent claims. I'm sure you've seen the argument that you've changed the scope of all of those other dependent claims and we don't know if they are allowable without additional searching or there are some sort of new issues, even if the independent claim now includes the allowable subject matter. That argument is frankly just silly a lot of the time, though sometimes it can be reasonable (dependent claims might contradict each other leading to confusion, or combining them might be new matter, etc.).
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snapshot

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Re: Retracting assent to examiner's amendment?
« Reply #6 on: 01-11-17 at 01:40 am »

Following an amendment after non-final rejection in an application with foreign inventors, an examiner has proposed rolling up some dependent claims into the independent claims to place the application in condition for allowance.  The foreign associate is worried that the inventors will not be able to be timely reached to approve the amendments, and wonders whether it would be better to:

a. Tell the examiner, okay, enter the amendments, but then later reneg on that approval if the client later does not accept the narrowed scope of the amended claims, or
b. Just tell the examiner, sorry, we can't approve the amendments at this time, you're going to have to write up a final rejection or allow the claims as presented.

Would appreciate some feedback, especially from examiners, as to the effect on the examiner as well as the procedural mechanics of (a).

All things considered, I would much rather prefer b, but I almost never call an attorney asking for an examiner's amendment unless it's something minor anyway.

Couldn't option a run into some estoppel problems on applicant's end?
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fewyearsin

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Re: Retracting assent to examiner's amendment?
« Reply #7 on: 01-11-17 at 03:08 pm »

Retracting authorization is a TERRIBLE idea.  Be a normal person, call the examiner, and tell them you need more time.  They will either (1) give you more time, or (2) mail out the office action.

If you give authorization, the Allowance is going out that same day.  Yes, there are a few days delay for mailroom processing, but if you call to "retract" the authorization, you are creating a huge hassle both for yourself and for the examiner.  Most likely course of action is that you will need to file an RCE now to fix any changes.  You have turned an opportunity into a disaster.
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Robert K S

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Re: Retracting assent to examiner's amendment?
« Reply #8 on: 01-11-17 at 03:56 pm »

Retracting authorization is a TERRIBLE idea. ... creating a huge hassle ... for the examiner

What steps would the examiner need to take in such circumstances that would be hassling?  I'm curious to know because this factors into the risk/benefit (or in this case risk/damage) calculus.  The risk that the client would disapprove the amendments being very, very low, I would only worry if the consequence associated with the remote possibility of this option would be to irremediably piss off the examiner.

As for being a "normal person" and communicating the situation with the examiner, rest assured that I have made the appropriate communication, notwithstanding my unfortunate state of not being normal.  ;)
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doop

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Re: Retracting assent to examiner's amendment?
« Reply #9 on: 01-11-17 at 04:35 pm »

The hassle is likely (though I am not 100% certain) that the examiner performs the work to issue the allowance (including writing the examiner's amendments, interference searches, proper classifications, etc.) and gets the appropriate counts, but then if the allowance is later retracted, the counts that the examiner got for issuing the allowance would be taken away, and he or she would then have to write and issue a final action.  If it is possible that the examiner loses the counts on the work that he or she actually performed, and then has to issue a final office action, then that examiner will be pissed.  You may lose any future benefit of doubt by the examiner, including the indication of allowance because the examiner may find that upon further consideration... etc.  But if the counts do not get taken away for the work performed, then the examiner may just be slightly annoyed, but that'll be about it.
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lazyexaminer

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Re: Retracting assent to examiner's amendment?
« Reply #10 on: 01-11-17 at 05:40 pm »

I would not consider it a hassle if the allowance was already mailed. As discussed above, all you can do is file an RCE, so I will be doing more work on this case but I will be compensated for it. No big deal.

I would not consider it a hassle if I hadn't done anything yet. I might be annoyed that I thought I was done with the case with an allowance but now am not. This situation is unlikely, as most examiners are going to send an allowance ASAP once you agree.

I would consider it a hassle if I wrote up the allowance, it wasn't submitted yet, then you called to change your mind. I wasted my time writing the action, and I'm getting fewer counts now as I'm going to have to send a final instead. Like doop says, that is annoying. But again, not likely unless you reneg right away (which itself isn't likely in your scenario, since you are saying you are waiting for foreign approval anyway).

If the allowance was submitted but not mailed yet and you called to change your mind, it would be a hassle to track it down and stop the mailing process. I am not clear to what extent that is even possible, and that is extra work off the production clock to give myself fewer counts. I might just say I already submitted it and it's already out of my hands so I can't do anything, so file an RCE or CON when you get the allowance. I wouldn't feel bad about it since you were the one who reneged on the agreement. So ultimately, this scenario is a hassle if I'm super generous, but more likely not a hassle.

So overall, not that much of a hassle probably, could be annoying though...
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