Patent Attorney and Founder
I’ve won I’m JD Houvener your host of the bullet Today Show were you the inventor entrepreneur business owner get your daily dose of inspiration to make the world a better place when part 4 today talking about our top five services that we’ve been getting to clients now for five years it’s hard to believe time flies this week 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 we get you a copy the video will send you the URL would be great to build a check now check out that information don’t forget we’ve got a lot of the more details in our book bold patents the inventors guide to patents this has got the the details we’re not gonna get to that in this video I’m just gonna give you kind of the teasers but to dig in and learn more about all these check out chapter 8 chapter 14 to learn more about the search and the applications all right today is actually kind of a fun holiday it’s a national scavenger hunt day really interesting right and 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 some what’s called prior art or a reference that would say that now your writings not new or that it’s that’s just an obvious version of this other article or publication that’s been out there now for years so examiner is on this wild goose chase the scavenger hunt and what’s interesting is that what they do when they finally find something whether they object or reject your invention as they look at it the issue is called an off this action you may have heard of office action so that’s what the patent examiner is going to do if they determine now 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 is get cleaned up first so 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 examiners 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 and you see in that office action the full the patent or the publication that they’ve used so you can look at it and see for yourself with it you think they’re right or not so depending on where you’re at in complexity level of course that’s where how much level of effort 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 as you can gauge the likelihood of being able to overcome the examiners rejection or objection with legal arguments or with amendments to the claims so if someone’s looking to you know if inventors 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 would 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 too to make sure that they’re there avoiding the prior art reference and 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
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818-338-6377 because
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