Posts Tagged: "utility rejection"

Patent Prosecution 101: Understanding Patent Examiner Rejections

Unlike certain rejections one faces in life, a rejection from a patent examiner is never the end of the story, and definitely not final – even when the rejection is called a final rejection all hope is not lost and there are things that can be done to continue to attempt to persuade and ultimately convince the patent examiner you are entitled to a patent… Generally speaking, what you will want to do after you get a final rejection will not be the type of thing you will have the right to do. In that likely situation, the most common thing to do is file what is called a Request for Continued Examination (RCE), which is allowed under 37 CFR 1.114. An applicant request continued examination of an application at any time after prosecution in the application is closed.

Understanding the Patent Law Utility Requirement

In order for a patent applicant to satisfy the utility requirement the claimed invention must be “useful” for some purpose either explicitly or implicitly. Utility problems normally arise in one of two scenarios. First, it is not apparent why the invention is “useful,” which can occur when an applicant fails to identify any specific and substantial utility for the invention or fails to disclose enough information about the invention to make its usefulness immediately apparent to those familiar with the technological field of the invention. Second, there are rare instances where an assertion of a specific and substantial utility for an invention is simply not credible.

The Patent Law of Perpetual Motion

The reality is that science fact and science fiction are dictated based on currently accepted understandings, whether they be true or not. As impossible as something sounds, what we understand as science fact is always bounded by our understanding of our surroundings. As our knowledge expands what was formerly science fact frequently becomes science wrong, sometimes badly wrong. Does that mean that someday perpetual motion will be a reality? Who knows. I am not holding my breath or taking any bets, but there are a lot of highly intelligent people constantly trying to unlock the mysteries of the universe and with so many new discoveries it seems science continues to encroach upon the impossible. Just think about cloaking devices and a transporter a la Star Trek, which are already to some extent realities.