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By J.D. Houvener
Patent Attorney and Founder

I’ve won! I’m J.D. Houvener, your host of the Bold Today Show, where you, the inventor, entrepreneur, business owner, get your daily dose of inspiration to make the world a better place. In part 4 today, we’re talking about our top five services that we’ve been providing to clients for five years. It’s hard to believe time flies. This week, we’ve talked about our core offerings for patent law, including the patentability search opinion, provisional patent application, and the non-provisional patent applications. If you missed those, get a hold of us, and we’ll send you a copy of the video or the URL. It would be great to check out that information. Don’t forget we’ve got a lot more details in our book, “Bold Patents: The Inventor’s Guide to Patents.” This has got the details. We’re not going to get to that in this video. I’m just going to give you kind of the teasers, but to dig in and learn more about all these, check out Chapter 8 and Chapter 14 to learn more about the search and the applications.

Today is actually kind of a fun holiday – it’s National Scavenger Hunt Day. Really interesting, and sometimes that’s what it feels like for the inventor and even the patent attorney when you submit your patent application. Right after you’ve submitted the non-provisional app, it’s now in the hands of the examiner, and they’re on a scavenger hunt to go find something out there that is gonna be like your invention. Their job is to try to reject your invention, try to find what’s called prior art or a reference that would say that now your invention is not new or that it’s just an obvious version of this other article or publication that’s been out there now for years. So, the examiner is on this wild goose chase, the scavenger hunt. What’s interesting is that what they do when they finally find something, whether they object or reject your invention, is they issue what is called an Office Action. You may have heard of an office action. So that’s what the patent examiner is going to do if they determine that this invention as it is currently written is not gonna get through the gate. I’m not going to allow this to get issued. There’s something that needs to get cleaned up first.

Office actions can range in complexity from something quite simple, which might just be a simple error on a drawing, maybe one of the numbers is wrong or the shading isn’t quite clear, and the figure number needs to be changed, to something way more complex, which might involve a 35 USC Section 101 eligibility rejection. The examiner is saying this isn’t even eligible under patent law. They may issue a 102 recitation, which is about, hey, here’s at least one reference that says this has already been done before; everything that you’re claiming is under this one or a set of prior art references, and they leave a clear delineation and they cite to what those references are. You see in that office action the full patent or the publication that they’ve used. So you can look at it and see for yourself if you think they’re right or not.

So depending on where you’re at in the complexity level, of course, that’s how much level of effort it’ll be for your patent attorney to help you with. So it’s important you have an understanding of how complex the rejection is so you can gauge the likelihood of being able to overcome the examiner’s rejection or objection with legal arguments or with amendments to the claims. If someone’s looking to be as adversarial as possible and they try to get as much rights as they can in an office action, they’re gonna want to push back with just legal argument, you know, come back with the examiner with very creative legal arguments based on case law about why the examiner may be wrong and why what the inventor has put forward is still very viable under the law.

Now if the party wants to just get the patent issue, right, they’re willing to negotiate with the examiner; amendments may be made to the claims. And in almost every case, amendments mean narrowing the patent scope. In most cases, it’s adding additional terminology or changing the words to give more of a definition around them to make sure that they’re avoiding the prior art reference. So this, of course, every case is different and it’s going to depend on what your invention area is and the art unit of examination that was assigned. And it’s going to be something we should talk about. So if you’ve got an office action and you want to get some questions answered, please give us a call at 818-338-6377.

About the Author
J.D. Houvener is a Registered USPTO Patent Attorney who has a strong interest in helping entrepreneurs and businesses thrive. J.D. leverages his technical background in engineering and experience in the aerospace industry to provide businesses with a unique perspective on their patent needs. He works with clients who are serious about investing in their intellectual assets and provides counsel on how to capitalize their patents in the market. If you have any questions regarding this article or patents in general, consider contacting J.D. at