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By J.D. Houvener
Patent Attorney and Founder

okay so this question is out of need him Massachusetts it’s about the USPTO examiners so I’ll put the question up here maybe this is related to something you’re working on as well so 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 additional search great question this is what’s called an office action and for some people they’re like you know struck that oh my gosh I’ve been rejected okay and an office action is really common in fact on average a pat application they get 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 um on on 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 examiner will perform an additional search is when they have to do what’s called a when you have to file a request for continued examination and 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’s some pilot programs that will allow you to tweak it but if that’s not enough then you’ll need to file what call a request for continued examination where you pay right The Examiner to go do additional searching they’re going to look at the criteria uh of what you’ve been U what you submitted and they’ll get to look over the prior again because what you’ve claimed has likely change in scope good question out there

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