There Are NO Bad Patent Examiners — What Patent Professionals Can Learn from the Other Side of the Desk with Mary Maille Lyons
58m | Oct 21, 2026What really happens on the other side of a patent application? Attorneys and inventors spend plenty of time thinking about claims, prior art, and Office Actions, but the examiner reviewing the application is working through the same invention from a very different perspective. Understanding how examiners approach that process can change not only the way applicants respond to rejections, but the way they think about prosecution from the beginning.
My guest is Maille “Molly” Lyons, a scientist, researcher, educator, and former USPTO patent examiner who spent 14 years examining biotechnology applications. Today, through SeaLyons LLC, she works with inventors and patent professionals to help them better understand the U.S. patent examination process. She is also the author of There Are NO Bad Patent Examiners: The Unofficial Guide to Working with the “Good” Ones, which takes a practical and often humorous look at what happens from the examiner’s side of the desk.
We talk about how examiners are trained, what they look at when a new application reaches their docket, and why claim language is so often where misunderstandings begin. Molly also explains why rejection is a normal part of prosecution, how examiner interviews can help move a case forward, and why telling an examiner they are wrong is rarely the best place to start. We also discuss what she learned after leaving the USPTO, the value of treating prosecution as a collaborative process, and what technology transfer offices can do to help researchers navigate patents before a public disclosure creates problems.
In This Episode:
[02:05] Maille “Molly” Lyons shares how her background in scientific research and teaching led unexpectedly to a career as a USPTO patent examiner.
[03:19] We talk about learning patent law from scratch and the intensive training new examiners receive through the Patent Academy.
[05:50] Molly discusses how examiner training has changed, why she loved patent examination, and the importance of strong writing skills.
[10:16] The story behind There Are NO Bad Patent Examiners and Molly’s scale from “good” to “super fantastic.”
[12:49] Who the book is for and why applicants should understand that a rejection is a normal and often useful part of prosecution.
[16:30] We discuss moving away from an “us versus them” mindset and treating patent prosecution as a collaborative process.
[19:41] When a disagreement may need to move beyond the examiner through pre appeal, appeal, or another level of review.
[21:38] Molly uses the idea of a fence around an invention to explain claim scope and the examiner’s responsibility to both the inventor and the public.
[24:57] What an examiner looks at first when a new application reaches the docket and why the claims come before the specification.
[28:48] We talk about where misunderstandings most often begin and how examiner workloads and production requirements affect the process.
[32:55] Why following a familiar application structure can make an examiner’s job easier and reduce unnecessary objections and rejections.
[35:16] Molly discusses “octopus” claims, drafting choices that make examinations more complicated, and the importance of word choice when responding to an examiner.
[38:10] How to respond when an Office Action appears to be wrong without turning the disagreement into a personal argument.
[41:26] We discuss leading with the strongest arguments, addressing everything the examiner has raised, and preserving issues that may matter later on appeal.
[45:16] Why examiner interviews can move prosecution forward and help uncover the real source of a disagreement.
[48:43] When involving a supervisory patent examiner can help and why escalating too quickly can make a difficult situation worse.
[52:01] Molly shares what technology transfer offices can do to build stronger relationships with university researchers before public disclosures occur.
[55:43] Molly’s rapid fire advice for patent practitioners and why the best examiner applicant relationships work as a collaborative dialogue.
Resources:
Mary Maille (Molly) Lyons - LinkedIn
PatWorld - Mary Maille (Molly) Lyons
Meet the IP Professional:Maille Lyons – Seeing Patents from the Other Side
There are NO bad Patent Examiners: The unofficial guide to working with the "good" ones
