Patenting for Inventors Ep. 141 - Why I Like Phone Calls From The 571 Area Code.

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Patenting for Inventors Ep.141

In this episode of the "Patenting for Inventors Podcast" Adam discusses why he gets excited when he see’s a phone call coming from the 571 area code. Usually it means a patent examiner is calling me to make an "Examiner's Amendment." Why is that good and what are examiner amendments about? Listen to the latest episode and learn!

Podcast Transcript:

Speaker 1:

You are listening to the Patenting for Inventors podcast, part of the Look Legal Pods from the law firm of Nolan Heimann, the number one source for your intellectual property, business, and entertainment law needs. Now here's your host, registered patent attorney, Adam Diament.

Adam Diament:

Hello and welcome to the Patenting for Inventors podcast. My name is Adam Diament, a registered patent attorney and partner at the law firm of Nolan Heimann in Los Angeles, California. This is Episode 141: Why Phone Calls From a 571 Area Code Are Exciting for Your Patent Application: Examiner Amendments. Now this might seem like a strange topic, but I decided to put it in because I recently saw a call from a 571 area code on my phone and I got very excited. This is because the 571 area code is the area code of the patent office. Why did that excite me? If there are major issues with your patent application, a patent examiner is not going to call you. The examiner isn't going to call you to say that your invention is obvious, because there's nothing you could do about that over the phone. The examiner would have to lay out in writing the reasons why, and if you want to respond then you have to do a detailed response back.

That's not something an examiner is going to do over the phone, but what an examiner will do over the phone is that if your patent application is really close to getting allowed, but there're just a couple minor things like a typo, the examiner will call you up and ask if they could do an examiner amendment, and if you allow them to do it, then they'll just make a quick fix for you. This is a lot easier to do for them and for you because if you don't allow them to do it, then they have to spend time writing it up, which maybe will take half an hour. Then you have to spend time responding, which maybe will take a half hour of your time with all the formalities of responding, and it's just a big waste of time if it's just a really simple thing to do.

Now on the phone call, they'll tell you what they want you to do. They'll say something like, "In Claim Six, it looks like you forgot to put the word at between these two words." Or "In Claim Seven, it looks like you misspelled the word any by putting in the word may instead of any." Now, those are actually real examples that I got recently, which is what inspired me to do this episode. But before saying yes, you should pull up your patent application, look at it to make sure it's okay. If it's okay, then just say yes. If you tell them, "I'm not at my computer now, but let me take a look later today and I'll give you a call back tomorrow." You call them back and you tell them whether you'll accept their examiner amendment. Now, maybe you don't want to accept their amendment because you don't want to change a word, and that may be because you think the word is really important and you don't want it changed.

You can tell the examiner that you don't want the examiner to make any amendments, then the examiner will do a formal write up, send you a rejection or an objection, and then you could respond back with your own amendments or make arguments about why your original wording is correct. I don't think I've ever had an examiner amendment that I haven't accepted, because they're usually just really minor things and the faster you accept the amendment, the faster you'll get your notice of allowance and issued patent.

I do want you to be aware of something very important. Scammers know that the Patent and Trademark Office makes calls from the 571 Area Code. So guess who will spoof 571 Area codes to make it look like it's coming from the Patent and Trademark Office? Scammers. What they'll do is they'll say they're from the patent office and that you need to pay some extra fees over the phone. Do not do it. No one will ever call you from the Patent and Trademark Office and say that you owe them money. Now, the scammers usually don't target the applications on file that have attorneys of record, because the attorneys know the procedures and likely won't fall for that trick, but it happens all the time for applicants that are filing their own applications, especially for trademarks.

Never pay any money over the phone if someone says that they're from the Patent and Trademark Office. Maybe for you, don't get as excited as I would about the 571 Area code. Be a little bit leery. But if you do get one, the examiner will tell you their name, your application number, why they're calling. It's unlikely a scammer is going to try to call you and fake being an examiner and fake pretending that your application will be allowed if you allow an examiner amendment and pay some fee over the phone. I haven't heard of that scam yet. I guess it could be done. I hope I didn't give scammers any ideas.

You could always go to your online patent application file, see the name and phone number of the examiner assigned to your application, and if you're not comfortable with the call because maybe you think they're spoofing, you can always say that you'll call them back at the number listed on the patent website. That's the basics of examiner amendments and why phone calls from the five seven one area code can be exciting for your patent application. I hope you enjoyed the episode. Until next time, I'm Adam Diament, and keep on inventing.

Speaker 1:

Thanks for listening to the Patenting for Inventors podcast. If you enjoyed the show, please kindly rate and review on your favorite podcast platform. The contents of this podcast are intended for general informational purposes only. The facts of every legal matter are unique and the content of this podcast should not be construed as offering legal advice for your specific legal situation. For more information about how we can help with your own legal needs, check out our services at NolanHeimann.com. That's N-O-L-A-N-H-E-I-M-A-N-N. Or call Adam Diament directly at (424) 281-0162. The preceding information may be considered an attorney advertisement and does not establish any attorney-client relationship.