Prosecuting a patent application may be viewed as a negotiation. The practitioner’s objective: to obtain the desired claim scope for your client; minimize amendments/arguments that might reduce the scope of literal claim coverage or even claim coverage under the doctrine of equivalents; and conclude prosecution in the shortest possible time. The examiner’s primary objective: to protect the public interest by issuing valid U.S. patents; the examiner is not thinking down the road about infringement issues. This creates opportunities for a negotiation, e.g., substituting language that provides a basis for ensnaring infringers but at the same time satisfies the examiner’s patentability concerns. Some examiners quickly understand that there is no reason for an applicant to obtain a patent that no one will infringe; the discussion then switches over to seeing if there is broader language that the examiner will deem to nonetheless satisfy the requirements of patentability.
