The other day we received a Notice of Allowance in one of our US patent cases. In the Notice, the Examiner provided an Examiner’s Statement of Reasons for Allowance (ESORFA). We did what we usually do in such situations — we reported the Notice to the client, along with a suggestion that the client may wish to consider whether it is comfortable with the ESORFA.
(Yes, yet another six-letter acronym being coined. You saw it here first, folks!)
Often the reporting of the Notice of Allowance is the end of it. The client never offers any comment one way or the other about the ESORFA, we pay the Issue Fee, the patent issues, and no one ever give’s another moment’s thought about the ESORFA.
But in this case I was absolutely delighted when the inventor responding by saying he was not sure what he should be looking for, and wondering how or why he would be uncomfortable. It is always welcome news when an inventor makes the time and the energy to get involved in the details of the patent process, whether it be the drafting of the claims at the outset or a review of ESORFA at the conclusion, or at points in between.
How does one explain to an inventor how to react to an ESORFA? I gave it a try.
I started in my response to the inventor by making a silly example. Suppose the invention is a mousetrap, I said, where the clever idea is that the spring that makes it swing shut is made of a certain kind of steel. Claim 1 is:
A mousetrap comprising:
a base, a trapping bar, and a spring, the spring made of that certain kind of steel … (and then we go on to explain the rest of the trap, which is conventional).
So far so good. The way a competitor infringes is they sell a conventional mousetrap except the spring is made of this special kind of steel. So far so good.
But then we can imagine that after ten years, litigation time comes. The patent owner finds it necessary to sue an infringer. And TYFNIL the infringer’s lawyer goes back and looks at the application file, and finds the ESORFA. And it turns out that back when the Examiner allowed the case, the Examiner said:
Nowhere in the prior art do we see a mousetrap where the spring and the trapping bar are made of that certain kind of steel …
(emphasis added.) Yes, because of this, the scope of that claim may be in question. Maybe the defendant might be able to convince the judge and jury that it does not infringe simply because its trapping bar is not made of that certain kind of steel.
Where this comes from is 37 CFR § 1.104(e):
Reasons for allowance. 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. … The applicant or patent owner may file a statement commenting on the reasons for allowance within such time as may be specified by the examiner. Failure by the examiner to respond to any statement commenting on reasons for allowance does not give rise to any implication.
MPEP § 1302.14 goes on at some length about ESORFA practice, giving examples of situations where maybe an Examiner should or should not make such a statement and what kinds of language might or might not be appropriate. The section finishes with a very unsatisfying discussion of what the applicant might do if the applicant were to be uncomfortable with the ESORFA, namely filing of “comments”:
Comments filed by the applicant on the examiner’s statement of reasons for allowance, should preferably be submitted no later than the payment of the issue fee, to avoid processing delays.
Then what happens?
The application file generally will not be returned to the examiner after the entry of such comments made by applicant on the examiner’s statement of reasons for allowance. Therefore, the absence of an examiner’s response to applicant’s comments does not mean that the examiner agrees with or acquiesces in the reasoning of such comments. … While the examiner may review and comment upon such a submission, the examiner has no obligation to do so.
This means that the comment process offers no sure way of eliminating the risk of the ESORFA causing big problems TYFNIL.
One has the disappointing sense that if an applicant really did wish to eliminate such risk, there would be little choice but to take some action (such as an RCE) to force the reopening of prosecution and to attempt to extract from the examiner a rescission or clarification of the ESORFA.
The silly example I made up, with the mousetrap, is one where I do think there would be little choice but to try very hard to extract the rescission or clarification. But over the years I have had many cases where an ESORFA appeared to me, on a quick look, to be harmless. Does this mean that in such a case no further action is needed? What if the ESORFA were to conceal a rather subtle but important problem that becomes clear only on a very close reading?
Anyway you can see, I think, why I am delighted that in this particular case the inventor expressed some willingness to take a look at the ESORFA and to discuss it with me. Hopefully we will conclude that the ESORFA is harmless and that there is no reason to hold back from paying the Issue Fee. But if so, then at least we will be moving forward after having made an informed decision about it.