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The All Important Patent Examiner
The patent examiner plays a crucial role in determining whether or not your patent applications is approved. In
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the video ,linked here, I point out that in patent prosecution the examiner is judge, jury and executioner.
He or she will decide whether your invention fits the criteria for begin granted a patent , that is whether it is Novel, Useful and UnObvious.
In the 35 patents I've personally received and in all the patents I've helped other apply for I've never seen an argument from the patent examiner on the Novel and Useful points . The argued point is Always whether the invention is Obvious in light of the prior art.
One reason we recommend and perform patent searches is to find the closest Prior Art to the invention, that is the prior art that the examiner is most likely to cite against the inventor.
The examiner almost always begins with the role of prosecutor. That is the examiner tries to find reasons not to grant the patent. By looking for the strongest prior art to show it is obvious. One thing that inventors often misunderstand (to their sorrow) is that the examiner can pick elements of several different patents and combine them to show the invention is obvious. That is if one patent teaches point A and another B and another C, the examiner will cite all three of them against the invention. None of the prior art patents cited need look exactly like what is shown in the inventor's patent application.
After the inevitable first rejection office action, the examiner shifts from the role of prosecutor to the role of judge. The patent attorney and inventor will respond to the initial office action by challenging the examiners position or changing the claims to accommodate it [usually by narrowing them to avoid the teachings of the "prior art".
If the second office action is also rejected the inventor usually gets one more try the "third strike". If this is a failure, the examiner will issue a "Final Rejection".
The Final Rejection, however is not necessarily final. It does however represent a big step up in the process particularly where cost is a concern.
Like in a trial the inventor may now submit the invention for appeal. Since this step is usually very costly it should not be undertaken lightly. Along with the choice of abandoning the patent application is the possibility of filing a completely new one or a "Continuation in Part". This strategy is most appropriate when the reason that the patent was rejected lies in a lack of key information in the body of the patent [specification] or when new inventions have been made since the initial filing that were not included and are potentially more novel and unobvious than what was rejected.
If you are in the patent prosecution phase and need more explanation than what you are getting from your attorney or just another point of view please contact us and ask about "Second Opinion". The link will take you to a form to fill in which will help you get started.
To contact us, just send an email to rblazey@businessmetamorphosis.com or give us a call at (585) 520-3539
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