This is the seventh article in my series on the patent prosecution process. After submission of the patent application, the U.S. Patent and Trademark Office (USPTO) performs a series of reviews. The first set of reviews is conducted by the Office of Initial Patent Application (OIPE). They check for two things 1) that the application meets minimum requirements (having a description, claim and drawing) and 2) that the application will not somehow threaten national security if published. If method and machine claims are both claimed an examiner may ask for the inventor to elect to pursue one of those in the application and compel the inventor to file a second application for the other claims.
Patent Examiners conduct the second set of reviews. Typically, they look at the drawings, read the claims and search for the material in the claims. That material is called “prior art.” The invention can only claim an innovation above the prior art combined with the experience of a person of ordinary skill in the art (POSITA) that the patent covers. The examiner then rejects the claims that fall below that level (also called the inventive step) and allows the claims that exceed it in a first office action. After that point, the applicant can reply either disputing the examiner’s contentions or agreeing with it along with adjusting the claims as necessary. The examiner reviews the arguments and claims before making a final office action. The applicant can, once again, dispute or agree with the final office action. However, if the applicant wants to have the examiner review the substance of the patent application again, then the applicant needs to file a Request for Continued Examination (RCEs) or to appeal the action to the Board of Patent Appeals and Interferences.
While some attorneys charge $1200 to $5000 to make these arguments, the Law Office of Michael O’Brien includes responses to the first and final office action as part of the flat fee for patent prosecution. However, RCEs cost $1200 plus USPTO fees.
There is a great deal of skill involved in making arguments. For example, if the applicant argues that the preamble limits the claim, the applicant is forever bound by this assertion. Similarly, if the applicant narrows claims to avoid a rejection, the material in the former claims is lost due to the “Rule against Recapture.” While inventors may be able to write an application by themselves, they usually have a lot of difficulty in the examination phase. An errant statement can completely thwart an otherwise meritorious application.
A Registered Patent Attorney can help you obtain the broadest protection possible without having errors cost you valuable patent protection. The Law Office of Michael O’Brien has the knowledge to assist inventors in obtaining patent protection for their inventions, and would love to speak to you about your latest creation.