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Reviewing a Patent Application Drafted by an Inventor

Written by Gene Quinn
Patent Attorney & Founder of IPWatchdog
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Posted: Mar 10, 2012 @ 9:30 am
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Lately I have received a lot of requests from independent inventors who have drafted their own patent application and want me to review it prior to them filing it with the United States Patent and Trademark Office. The reason for having an attorney review a patent application drafted by an inventor are obvious — they want to make sure that they did everything properly.

The requests I have received lately go something like this: “I have drafted a patent application that is 30+ pages of text, plus claims and 10+ drawings.  I would like to have you review the application before I submit it to make sure I haven’t made any mistakes.  I also hope this review doesn’t take you more than 1 hour to complete.”One hour to complete? I don’t even believe it is possible to carefully and critically read and absorb an application of that length in 1 hour or less. This is an unrealistic request and one that is sure to turn off an experienced patent attorney who might otherwise be willing to help.

The first time an inventor told me this recently I thought it had to be someone who was out of touch, but then I have had no fewer than 3 other inventors in recent months present with nearly the same request, each wanting to pay me for no more than an hour of time to review their application.  Where is this coming from?  I really don’t know, but I thought I would take this opportunity to explain things from the attorney perspective.

It is certainly a fine for an inventor who has drafted their own patent application to request an attorney to review the application prior to submission, but a patent attorney who is asked to do this will likely have many things in mind.  First and foremost is that if something does go wrong with the patent application the inventor will blame the patent attorney who said “it looks fine to file.”  So there is a tremendous amount of risk involved on the part of the patent attorney reviewing an application drafted by an inventor.

What could go wrong?  The patent process is a long and often unnecessarily complicated process.  The rules are rather archaic and even counter-intuitive at times.  There are a great many things that can go wrong even with an expertly drafted patent application.  When an inventor is going to try and navigate their own application through the USPTO maze the likelihood that an adverse outcome will be the result goes up dramatically.  For better or for worse when many people have an adverse outcome the first thing they want to do is blame someone else rather than blame themselves, or just blame fate.  No where is this more on display than in medical malpractice lawsuits.  Severely negative outcomes can happen even if a doctor does everything properly and by the book, that is why if you go into the hospital you sign all kinds of disclosure statements that get you to agree that you have been explained what can happen.  Negative outcomes lead to complaints and sometimes to litigation.  No attorney needs that kind of nightmare when all they did was spend an exceptionally small amount of time reviewing an application.

Even if you do the best patent search money can buy there will be prior art that you couldn’t have known about.  Patent applications are maintained in secret for at least 18 months and no one can find applications filed within that 18 month period.  They are required to be kept secret and unfindable by law for that 18 month period.  So it is extremely likely that by the time the patent examiner starts to examiner your patent application there will be more prior art available for use by the patent examiner than there was available to be found at the time you file a patent application, thus increasing the likelihood of a bad outcome.  Of course, this is true when a patent attorney drafts a patent application as well, but when a patent attorney drafts a patent application there are all kinds of nuances included in the application that can be added to claims to overcome examiner rejections, both the ones you can envision and the ones you know you will get but can’t possibly conceive of.  Inventors are terrible about including those absolutely essential nuances.

Of course, when an inventor is drafting their own patent application it is almost universally because they want to save money, or perhaps they just don’t have the funds to hire a patent attorney.  That is understandable as well, and I am an advocate of doing what you have to do given your circumstances to responsibly move a project forward in a reasonable manner.  Having said this, in all my years whenever I deal with an inventor who wants to do it themselves or wants to do it with some modest assistance they NEVER have what I would characterize as a comprehensive patent search.  Frequently inventors will only search using Google Patents, which is enormously risky given that Google Patents has some significant holes in their collection.  Every patent attorney I know knows of one or more patents that they tried to look up on Google Patents and they just weren’t there. So relying on Google Patents is fraught with risk.

Furthermore, if you are only doing a keyword search you are absolutely, positively going to miss highly relevant prior art that could have been found by a professional patent searcher.  The patent searchers I use are SP Attorney Services, and they do also provide searches for independent inventors and companies as well.  They have their own proprietary system on which they have a patent pending.  They start with the most comprehensive keyword search you can imagine and suck in all kinds of patent data that is shifted by their system.  They identify the patent classifications where the patents are categorized by the USPTO and identify the most common patent classifications.  Then they go by hand through every patent categorized in the most common patent classifications.  They then go through an iterative process to make sure they have found everything.  There is no way an independent inventor could do such a thorough search, and frankly no way a patent attorney or patent agent could do a comparable search either.  Their searches range in price from $450 to $800 (generally speaking), which gets you a patent search report without analysis.  A very good price really for the level of detail and comprehensive nature of the search. In fact, this is the best money you will spend because it will tell you whether you are wasting time and money to move forward.

Let me say this as simply as possible: A good, comprehensive patent search is absolutely essential.  There is nothing any patent attorney can do or say without knowing what your invention is and what the prior art holds.  A patent application needs to identify the invention and assistance can be given without knowing about a search to a certain extent.  If you are woefully inadequate in  your description an attorney can help even without a search.  If you have a half decent description and you want the patent claims reviewed and the detailed description reviewed for sufficiency the only way to do that is to know what is in the prior art.  A patent application needs to describe what is new and nonobvious.  You need to focus the vast majority of your attention on those aspects of the invention that are likely to be viewed as new and nonobvious by the patent examiner.  You simply cannot have any reason to know what is likely going to be new and nonobvious without a patent search.

Even assuming a do-it-yourself individual has a good patent search that search needs to be reviewed.  The patent searches that I receive from SP Attorney Services have anywhere from 40 to 100 references.  They do separate the references into an A, B and C list based on what they believe to be most relevant, but there can easily be a great reference on the B or C list that teaches one small piece of the invention, so you have to review everything.  That takes time, not only to review but to internalize and evaluate.  I have yet to figure out how to thoroughly and honestly go through a patent search in 1 hour.  Sure, anyone can flip through patents and say it looks good or it looks bad, but if you want input you need to spend time.  The search assessments I do are not only for the client, but also for whoever is going to draft the application.  This is what I see, this is how we can distinguish this reference and this is what I think the broadest articulation of the invention can be that has a realistic opportunity to be patented.  Reviewing and writing that up takes multiple hours.

Once you have figured out what the prior art is and what aspects of the invention are likely unique, then you have to go about articulating that in patent terms.  Again, this takes time.  Perhaps more time than you might imagine since there is not a blank slate to begin with, but rather the do-it-yourself inventor is asking for a critique of their patent application.  That means the reviewing patent attorney not only has to go through the claims much the same way that a patent examiner would, but they also have to go through the written disclosure and drawings to see if there is support for everything that is necessary and required to describe the grandiose invention, as well as the specific nuances that are necessary to understand the intricacies and support the claims that are filed.  Furthermore, there needs to be more nuance in the application than in the claims because you can rest assured you will get your claims initially rejected and will want or even need to add additional features and nuances into the claims to get them allowed.  Do-it-yourself inventors and the bargain basement patent attorneys and agents that draft applications are awful at this, they frequently only have enough in the written disclosure to barely support the claims they have filed.  I see cases like this all the time and it is a tragedy to see something that is new and nonobvious but where the patent application just doesn’t articulate it.

With all of this in mind, like many others I tell inventors that if they are going to do it themselves they should consider getting a patent attorney to review their application before they file.  Having said that, it is unrealistic to believe that a patent attorney can review what you have done in 1 hour or less. Furthermore, it is foolish to believe that an application reviewed for 1 hour or less will result in a work product that will be as good as if it were drafted by the patent attorney in the first place.  If you want to do it yourself and have a qualified, experienced patent attorney review your work you should budget at least 6 to 10 hours of their time to review everything, critique what you have done and provide feedback and guidance for you to continue to build upon.

For those who are going to do it themselves I also recommend not waiting until the end of the process to start to work with a reviewing patent attorney.  If you have 40 pages of written disclosure, 15 pages of claims and 10 sheets of drawing you have put in a lot of time to get there.  I can say with great certainty that out of those 40 pages of written text you likely have no more than 20 pages that will be considered useful, likely even less.  Truthfully, in the applications I review about 25% of what is there is useful and appropriate, with the other 75% being various levels of not useful and even potentially harmful.  A patent application is not a marketing document, so having your sales pitch there for 10+ pages isn’t useful.  Likewise, discussing competitors and how your business model distinguishes you is for a business plan, not a patent application.

With this in mind, if you want a reviewing attorney involved the best thing you can do is engage them sooner rather than later.  Consider getting a professional patent search and a detailed assessment of that search with suggestions from an experienced patent attorney prior to starting the drafting process.  Knowing what the prior art is and what is most likely going to distinguish your invention gives you a target.  You might also be able to obtain a patent template to use from the attorney, or you can consider starting out with the Invent & Patent System, which leads you through important questions and provides a template use can use at the end.  This structure can be extremely valuable to will likely prevent wasted time and effort, particularly if you are willing to engage a reviewing attorney for 1 – 2 hours several times during your drafting process.

The moral of the story is this: there is a way to get from invention to filing your own patent application with the assistance of a reviewing patent attorney.  Placing unrealistic expectations on a reviewing attorney will not lead to the type of professional help you need.  When someone asks me to spend 1 hour reviewing their application I politely decline.  There isn’t enough money for the risk and there is little or nothing I can do in 1 hour anyway.  So be realistic and don’t wait to the last minute to get help.

 

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Posted in: Educational Information for Inventors, Gene Quinn, Inventors Information, IP News, IPWatchdog.com Articles, Patents


About the Author

is a US Patent Attorney, law professor and the founder of IPWatchdog.com. He is also a principal lecturer in the top patent bar review course in the nation, which helps aspiring patent attorneys and patent agents prepare themselves to pass the patent bar exam. Gene started the widely popular intellectual property website IPWatchdog.com in 1999, and since that time the site has had many millions of unique visitors. Gene has been quoted in the Wall Street Journal, the New York Times, the LA Times, USA Today, CNN Money, NPR and various other newspapers and magazines worldwide. He represents individuals, small businesses and start-up corporations. As an electrical engineer with a computer engineering focus his specialty is electronic and computer devices, Internet applications, software and business methods.

 

 


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22 comments
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  1. Not enough time? Something could go wrong? You are preaching to the choir my man. Try doing it in a standard formula of X hours/case for every case.

  2. I spend at least 20 minutes “digesting” just the independent claims.

  3. Examiner-xyz & PTOExaminer –

    Thanks for your comments.

    Just wondering… how much time do you normally spend with an application initially to get your arms around the invention? In an ideal world, how much time would you like to spend? Have you engaged with patent attorneys in interviews prior to a first action, and if yes, has that helped?

    Cheers.

    -Gene

  4. Q: would a 1 hour review from a PA ensure that the application would be considered valid by the examiner or the courts

    A: No

    Q: would a 30-50 hour review from a PA ensure that the patent would be considered valid by the examiner or the courts?

    A: Again, no. The truth is, patent applications or granted patents can be rejected/invalidated for political or economic reasons that are unrelated to the substance or the format of the patent disclosure.

  5. When I get such requests from potential clients I turn them down, even on provisional applications. You know there going to be back..What is an Information Disclosure Statement? How do I file it? How much do I pay? How do I file on the web? DO NOT EVEN START THE PROCESS!! I appreciate good write ups by clients, but drafting claims avoiding, the art and building a case for patentability and “negotiating” with the Examiner cannot be done by a novice. It’s difficult enough for a skilled attorney. The “bottom line” –The attorney must take complete charge or the client walks. Perhaps a discount for a food write-up but that should be it.
    Mike Zall

  6. It really depends on how complex the invention is. Simpler applications that have short specs (40 pages) and narrower claims take longer but I almost never read such specs cover to cover… there just isn’t enough time; what I do is read the background section, the claims, and start off with a few quick keyword/synonym searches based on the independent claims… these searches help me better understand the prior art and eventually reveal exactly which features of the claims are “more novel” than others. Then I go back into the spec and locate portions that detail these features in depth and use this information to create more detailed search queries. This process usually takes 4-6 hours.

    In an ideal world I would like to spend at least 8 hours on simpler applications and 16-20 hours on more complex applications (this does not include the time I would need to write up an office action).

    I don’t engage patent attorneys prior to first actions. The one time I did the attorney advised me that I should read every page of the specification because he spent a lot of time writing it for me. However, I sometimes call attorneys *after* I have completed a search and have found all the references that I need to rely upon. I do this to propose an examiners amendment to overcome those references to get to an allowance on first action. Usually what ends up happening is that I point to the relevant portions of the references and provide a verbal mapping to the claims. About half of the time I get approval on the examiners amendment and the other half of the time I am asked to send out a non-final office action because they want to discuss it with the client in detail. A 50% approval rate on examiners amendments before a first action is pretty awesome in my opinion (however these attorneys almost always file continuations with the original claims.)

  7. (can my previous post be deleted? something isn’t showing up correct.. it is missing some stuff in the beginning…)

    It really depends on how complex the invention is. Simpler applications that have short specs (40 pages) and narrower claims take longer but I almost never read such specs cover to cover… there just isn’t enough time; what I do is read the background section, the claims, and start off with a few quick keyword/synonym searches based on the independent claims… these searches help me better understand the prior art and eventually reveal exactly which features of the claims are “more novel” than others. Then I go back into the spec and locate portions that detail these features in depth and use this information to create more detailed search queries. This process usually takes 4-6 hours.

    In an ideal world I would like to spend at least 8 hours on simpler applications and 16-20 hours on more complex applications.

    I don’t engage patent attorneys prior to first actions. The one time I did the attorney advised me that I should read every page of the specification because he spent a lot of time writing it for me. However, I sometimes call attorneys *after* I have completed a search and have found all the references that I need to rely upon. I do this to propose an examiners amendment to overcome those references to get to an allowance on first action. Usually what ends up happening is that I point to the relevant portions of the references and provide a verbal mapping to the claims. About half of the time I get approval on the examiners amendment and the other half of the time I am asked to send out a non-final office action because they want to discuss it with the client in detail. A 50% approval rate on examiners amendments before a first action is pretty awesome in my opinion (however these attorneys almost always file continuations with the original claims.)

  8. ok they are both not showing correctly.. maybe i am inadvertently including some tagging? – delete both please

  9. This should work.. no more angle brackets…

    It really depends on how complex the invention is. Simpler applications that have short specs (less than 10 pages) and broad claims will take me about 2 hours to grasp the invention.

    Applications that have lengthy specs (more than 40 pages) and narrower claims take longer but I almost never read such specs cover to cover… there just isn’t enough time; what I do is read the background section, the claims, and start off with a few quick keyword/synonym searches based on the independent claims… these searches help me better understand the prior art and eventually reveal exactly which features of the claims are “more novel” than others. Then I go back into the spec and locate portions that detail these features in depth and use this information to create more detailed search queries. This process usually takes 4-6 hours.

    In an ideal world I would like to spend at least 8 hours on simpler applications and 16-20 hours on more complex applications.

    I don’t engage patent attorneys prior to first actions. The one time I did the attorney advised me that I should read every page of the specification because he spent a lot of time writing it for me. However, I sometimes call attorneys *after* I have completed a search and have found all the references that I need to rely upon. I do this to propose an examiners amendment to overcome those references to get to an allowance on first action. Usually what ends up happening is that I point to the relevant portions of the references and provide a verbal mapping to the claims. About half of the time I get approval on the examiners amendment and the other half of the time I am asked to send out a non-final office action because they want to discuss it with the client in detail. A 50% approval rate on examiners amendments before a first action is pretty awesome in my opinion (however these attorneys almost always file continuations with the original claims.)

  10. but I almost never read such specs cover to cover

    Ouch. Thanks for the honesty, but you are not doing the job you are paid to do. How does it feel to know that you are ripping off the public by taking home your paycheck without doing your job?

    I don’t engage patent attorneys prior to first actions. The one time I did the attorney advised me that I should read every page of the specification because he spent a lot of time writing it for me.

    He should have told you instead that you are required to examine the applicaiton and that means the entire application. His proferred reason has nothing to do with why you have to read the entire application. Also, nothing like not engaging because you will be told to do the actual job you are supposed to do. A bit like burying your head in the sandy beach.

    A 50% approval rate on examiners amendments before a first action is pretty awesome in my opinion (however these attorneys almost always file continuations with the original claims.)

    Stop patting yourself on the back. This has nothing to do with you, or your examining “prowess“. This is merely a game move to take what is given quickly and fight for what is considered to be due in steps, rather than all at once. If you think this is “awesome,” then you are missing the point (although, I think you have an inkling, since you added the “almost always file continuations” comment). Who knows, with your honesty and your gut inclination to notice what the applicants are doing, there still may be hope for you.

    Such honesty is hard work, such actual full examination that you are paid to do is hard work – you look thirsty.

  11. Blind Dogma, if you put every embodiment and every feature from the specification in to the claims then I will gladly read your work, otherwise please don’t expect any examiner to read embodiments and features that have nothing to do with the invention as claimed.

  12. that have nothing to do with the invention as claimed

    Oh woe is us when an examiner makes the fundamental mistake of not understanding what claims are and what a specification is (and why the two are different).

    Your post at 1:29 neglects to reflect what the law actually is. Your focus (on what is easy for you and not even acknowledging what is required by law) is a reflection of what is wrong with the system and why we have such poor quality in examination.

    Perhaps you would like to bury your head in the sand again.

  13. Dear PTOExaminer,

    Please tell me how you know “embodiments and features that have nothing to do with the invention as claimed” unless you have read those same embodiments and features. How do you know something is pertinent or not, unless you have actually read it? When your legal direction is to make a study of the full applicaiton, how can you do that without at least reading it cover to cover, at least once?

    Rather than chaffing at Blind Dogma and the unnamed patent attorney, you might realize that what they say is true. Your duty includes at a minimum reading the entire application.

    The mere fact that you don’t think you have enough time is not reason to abrogate your duty. I realize this is easy enough for me to say – I’m not the one with the stopwatch “gun” to my head. But the critical point is that the applicant is not the one to put that stopwatch on you, and the law requires you to examine the complete application. It sounds like hyperbole, but to say that you are breaking the law when you do not do your duty is really not all that far from the truth. I sympahtize with your predicament, but not nearly so much as to excuse the practice that deprives my clients of a full and fair examination.

    If you don’t think the time allotted is fair, then it is up to you to take this up with your union and have the union champion longer allowable examination times. I agree with BD that this focus on time is at least one major culprit to the poor examination quality I see.

  14. “I almost never read such specs cover to cover… there just isn’t enough time”

    The time you think you’re saving by not reading the application is wasted two, three, four, or more times over during prosecution of the application because you don’t understand “the invention” (or more likely inventions).

  15. Thanks for the invite Gene to discuss topics…I see PTOExaminer is not fairing well. These patent blogS seem to be merely a place where attorneys like to pat each other on the back and bash examiners. I can’t wait to see the response to my comments. I can only speak for myself but the world where patent attorneys are not to blame for prolonged prosecution is not my reality. I said it before the whole process seems like a game of liars poker. In the majority of my cases the application normally starts with ridiculous broad claims and I reject those. I would say most of them have no idea what the improvement in the application really is. Then applicant attempts to amend to the barest level— not to define their invention— just overcome the prior art. I search and find the added limitations and make a Final rejection. If the application contains features A-Z and only claims A-F I am NOT searching for G-Z because I am in a time crunch and I have a never ending chain of new cases to review and a limited supply of amendments that need my attention. Why would I waste my time. Applicant has signed a dec. and submitted claims they think are patentable I am not going to guess which elements G-Z they want to add to overcome prior art. Those who think other wise are foolish. Even when I happen to find and cite patents with unclaimed subject matter G-Z there is no comment on these patents from the attorneys and if I were them I wouldn’t comment either since there is no rejection using them on the record. The delay in prosecution and the backlog in general, as I see it, lies in the process of attorneys acting on behalf of their clients in trying to get the broadest reasonable claim for them….as they should but that process, the way it is done now, is counter to reducing the backlog. I would suggest reducing the SSP to 1 month and only able to buy 2 extra, otherwise what it the point of these computers, email, databases and other automation if we are still working in an old framework It would also really really help if applicants filed claims in sets of broad, more specific, even more specific and “all in” . Then I would have to search A-Z.

  16. These patent blogS seem to be merely a place where attorneys like to pat each other on the back and bash examiners. I can’t wait to see the response to my comments.

    If you think sticking your head in the sand is a good move, then I can see why you thinkk that we may have been too harsh on poor PTOExaminer.

    On the other hand, if you want the truth and to follow the law, then you might consider our treatment of PTOExaminer as a true kindness.

    If the application contains features A-Z and only claims A-F I am NOT searching for G-Z because I am in a time crunch

    You do realize that you are bound by the MPEP and that you are violating the law as well, do you not? Why “waste” your time? You want more reasons than you have to? Then see the posts by AAA JJ and Anon above.

    The delay in prosecution and the backlog in general, as I see it, lies in the process of attorneys acting on behalf of their clients in trying to get the broadest reasonable claim for them

    You fail to account for The rest of the PTA that reaches ungodly levels, including the 14 month action. Do you want to blame the applicant for that too somehow?

  17. Sorry BD I didn’t hear you due to the sand in my ears—-exactly what LAW is being broke?

    As far as the being BOUND by the MPEP. Please see MPEP 904.03 Conducting the Search. Explain to us all where we are BOUND.

    It is a prerequisite to a speedy and just determination of the issues involved in the examination of an application that a careful and comprehensive search, commensurate with the limitations appearing in the MOST detailed claims in the case, be made in preparing the first action on the merits so that the second action on the merits can be made final or the application allowed with no further searching other than to update the original search. It is normally not enough that references be selected to meet only the terms of the claims alone, especially if only broad claims are presented; but the search SHOULD, INSOFAR AS POSSIBLE, also cover all subject matter which the examiner reasonably anticipates MIGHT be incorporated into applicant’s amendment. Applicants can facilitate a complete search by including, at the time of filing, claims varying from the broadest to which they believe they are entitled to the most detailed that they would be willing to accept. In doing a complete search, the examiner SHOULD find and cite references that, while not needed for treating the claims, would be useful for forestalling the presentation of claims to other subject matter regarded by applicant as his or her invention, by showing that this other subject matter is old or obvious. In selecting the references to be cited, the examiner SHOULD carefully compare the references with one another and with the applicant’s disclosure to avoid the citation of an unnecessary number. The examiner is not called upon to cite all references that may be available, but only the “best.” ( 37 CFR 1.104(c).) Multiplying references, any one of which is as good as, but no better than, the others, adds to the burden and cost of prosecution and should therefore be avoided. The examiner must fully consider all the prior art references cited in the application, including those cited by the applicant in a properly submitted Information Disclosure Statement.

    And as long as you have your MPEP out check out: 608.01(m): Many of the difficulties encountered in the prosecution of patent applications after final rejection may be alleviated if each applicant includes, at the time of filing or no later than the first reply, claims varying from the broadest to which he or she believes he or she is entitled to the most detailed that he or she is willing to accept. Claims SHOULD preferably be arranged in order of scope so that the first claim presented is the least restrictive.

    I stick by what I said. IN most of the applications I see the attorneys do not proffer claims like they SHOULD by arranging them in order of scope and include THE MOST DETAILED THAT THEY ARE WILLING TO ACCEPT. ( I only use all caps above as I am limited by not being able to underline, bold or use italics…I am not yelling)

  18. examiner-xyz,

    You may want to read the Foreword to the MPEP. Just saying. :-)

    Your argument that attorneys are not putting in the most detailed claims they are willing to accept is simply nonsensical given the parade of current examiners, junior and primary, and former examiners turned practitioners who all testify that the directive from their SPE or TC Director is reject, reject, reject every single claim.

    I’ve written plenty of picture claims, certainly longer than a page, that I know are allowable because I have the best art in front of me, and they get rejected over what are silly combinations of references. It would make me laugh if it weren’t so wasteful.

    If you’re the same examiner from a prior thread who believes that applicants only amend because the examiner’s rejection is correct, there’s no point in even attempting to debate with you, and certainly no point in attempting to educate you. You not only have your head in the sand, you’re about 50 feet deep in it.

  19. Right – “The Manuel does not have the force of law….” your point being?

    Right – What I see everyday is “nonsensical” given what you see — you really won me over with that one.

    Not all picture claims are patentable just because they are picture claims.

    I I never said “only” but if it helps to make your point to make things up then by all means continue.

  20. “Right – ‘The Manuel [sic] does not have the force of law….’ your point being?”

    Typical examiner. You might want to read the rest of it.

    “Right – What I see everyday is “nonsensical” given what you see — you really won me over with that one.”

    So I guess you missed the posts by those examiners, including the primary with the new TC Director, that all say exactly what I posted: they are instructed to reject every claim regardless of the merits of the claim, and the silliness of the rejection.

    “Not all picture claims are patentable just because they are picture claims.”

    Picture claims that are drafted by me with knowledge of the best prior art, not the silly non-analogous references from the examiner’s text search, are allowable.

    “I never said “only” but if it helps to make your point to make things up then by all means continue.”

    If it helps you to stop reading when the facts are inconvenient to your position, then by all means continue.

  21. As an examiner in a jurisdiction external to the US, I find it *really* distressing that none of the articles on searching refer to, or even reasonably suggest a reference to patent searches of other countries. Do the search services, or even your own firm, truly ignore documents from other countries? In the *very* least, there should be a reference to Espacenet’s international database. Providing an inexperienced inventor a search report that is restricted in its entirety to US documents has, in my experience in dealing with US applicants applying in my country, led to complete shock and panic when a UK, EPO, CA, AU or JP document is raised against their claims as eventually granted in the US.

    Extending this to International work, in various inter-jurisdictional meetings I have found it interesting that non US examiners (myself included) finding a US-written ISR/IPRP cast them aside as more of a hinderance than a full and comprehensive search starting from scratch. Where production quotas are calculated based on the availablity of an International Opinion, the response is often “f—! I have to eat that time, now”.

    Interestingly, I had an applicant tell me about their strategy of filing early applications on developing products in ‘smaller’ countries as potential invalidity weapons against infringement claims in the US, but so as to avoid self-anticipation in later applications filed in the US.

    You can’t change the USPTO approach to xenophobic searching (sigh), but perhaps for future articles you can include reference to the larger, more comprehensive systems (and get a head start on the IP5 classification scheme!).

  22. Do not be to hard on the posting examiners, they at least can understand english. With the 112 rejections I see on a day to day basis this cannot be said for most of the examiners.
    Compared with other jurisdictions such as the EPO, Japan or Korea one must say that the examination in the US is unfortunately worse, not to say ridicously bad.