Received a Rejection? What to do next: Amending Claims vs. Arguing

In this Patent Pending Made Simple episode, Jaime and Samar debate whether to amend claims or argue against rejections in a patent application. It is common to receive rejections in the patent process, but determining whether or not you should fight those rejections or amend claims in your application is a difficult dance. Listen in to get some insights into your potential options.

Chapters
00:00 Introduction and Topic Introduction

00:58 Receiving a Rejection and Considering Amendments vs. Arguments

09:03 Considering Competitor Practices in Decision-Making

13:25 The Importance of Strong Arguments and Examiner Disposition

22:44 Managing Expectations and Budget in Patent Prosecution

25:57 Conclusion

Summary
The conversation discusses the decision-making process of whether to amend claims or argue against rejections in a patent application. The main factors to consider are the legal doctrines of prosecution history estoppel and doctrine of equivalence, the likelihood of competitors practicing the added feature, the strength of the argument, the examiner's disposition, and the overall strategy of the prosecution. The conversation also touches on the option of filing an appeal and the potential timeline and costs associated with it.

Takeaways
When deciding whether to amend claims or argue against rejections, consider the likelihood of competitors practicing the added feature.

The strength of the argument and the examiner's disposition are important factors to consider.

Filing an appeal may be necessary if the examiner is unreasonable or unwilling to listen to arguments.

The appeal process can take time, but it can also be a cost-effective option.

Setting realistic expectations of multiple rounds of rejections can help manage the budget.