Groover & Associates, PLLC
Patent Prosecution

The members of our firm have filed thousands of responses to actions of the Patent Office, including not only Amendments, but also Appeal Briefs, appendices illustrating the prior art, and factual Declarations (under Rule 132). However, experience does not automatically convey expertise. We believe that:

1) the top priority in prosecution is to avoid unintentional loss of effective claim scope;
2) where possible, we try to help the Examiner understand the claimed invention's patentability; but
3) where cooperative interchanges with the Examiner are not working, appealing a certain percentage of rejections is very useful to maintain a fair balance.

We use telephone interviews very often. We find that they will help to either reach agreement or to identifiy disagreements quickly. We also find face-to-face interviews in the Patent Office very useful in cases which are important enough to justify the expense.

Proof of facts can be very useful in prosecution (especially if a case later goes to appeal), so we commonly submit publications as exhibits (whether or not they are prior art), as well as Rule 132 Declarations. Like most attorneys, we tend to be impressed by our own arguments, but sometimes a bit of proof is much more persuasive. Factual proofs also reduce the risk of prosecution history estoppel.

We also understand that not every application has the same priority: some cases may be worth multiple continuations or ex parte appeals, but others may not. We are able to mount a full offense in a key case, but we understand that our clients' business needs may not justify a full offensive in every case. We listen carefully to our clients, and try hard to fit their priorities.

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