Patent Attorney and Founder
Okay, so this question is from Needham, Massachusetts. It’s about the USPTO examiners. I’ll put the question up here. Maybe this is related to something you’re working on as well.
“When can an examiner do additional prior art search? I received what’s called a non-final rejection, which I think is weak. I can just do arguments or arguments and claim amendments. If I just do arguments, can the examiner perform an additional search?”
Great question. This is what’s called an office action. For some people, they’re struck with the thought, “Oh my gosh, I’ve been rejected.” Okay, an office action is really common. In fact, on average, a patent application gets between two and three, 2.5 I think is the current stat, office actions before it gets granted. So, getting one is really common. 80 to 90% of all applications will get rejected. And a non-final one is even less threatening. It means that the examiner says, “Hey, look, I found something, whether it be novelty, under Section 101 related to the subject matter, or non-obviousness.”
And you’re right, you can reply with both legal argument or you can make amendments to change, or usually reduce, the scope of the claim to get that examiner to say, “Yep, what you’ve got is now novel based on those changes.”
If it’s a non-final office action response, the examiner will not perform an additional search. The only time an examiner will perform an additional search is when they have to do what’s called a request for continued examination, an RCE. And those are filed after the final rejection. So, you’re going to get a non-final, then you’ll get a final, then you can even do some amendments after final. There are some pilot programs that will allow you to tweak it. But if that’s not enough, then you’ll need to file what’s called a request for continued examination, where you pay the examiner to go do additional searching. They’re going to look at the criteria of what you’ve submitted and they’ll get to look over the prior art again, because what you’ve claimed has likely changed in scope.
Good question out there.