Filed under: Business, Inventor & Entrepreneur Updates, Patent Articles
Are you an ambitious inventor and filed a patent application with the United States Patent and Trademark Office (USPTO)? If you are such an ambitious inventor, there are things you may not know that can help you get a patent.
A “pro se” application is filed by the inventor representing himself or herself without a registered patent lawyer or agent. When a “pro se” application is being evaluated by the examiner of the USPTO, if patentable subject matter exists (meaning the invention has novel and non-obvious features), then the examiner, as part of their job, should draft one or more claims for the inventor. (See MPEP 707.07(j)).
The MPEP 707.07(j) states
When, during the examination of a pro se application it becomes apparent to the examiner that there is patentable subject matter disclosed in the application, the examiner should draft one or more claims for the applicant and indicate in his or her action that such claims would be allowed if incorporated in the application by amendment.
The cite from MPEP 707.07(j) allows the patentable subject matter to be in the “application,” which may include the detailed description, drawings, claims, abstract, etc. If the “pro se” inventor is not provided with recommendations from the examiner in a Non-Final Office Action (OA), do not be disappointed. The examiner may also recommend contacting a registered patent attorney or registered patent agent.
When the “pro se” inventor receives the OA, do not become overwhelmed. It is recommended that the inventor retrieve and review all patents cited by the examiner in the OA. Issued U.S. patents, published U.S. patent applications and many foreign patent type references may be obtained from www.patentfetcher.com for free (currently). Issued U.S. patents and published U.S. patent applications may be obtained from a host of other online services including the USPTO website, www.uspto.gov. Foreign patents may be obtained from the European Patent Office website, ep.espacenet.com.
After reading the patents, especially those relied upon in a rejection, the inventor is in the very best position to articulate the differences between their invention and an invention to another used in a rejection. If the inventor determines any differences, it is recommended that the inventor call the USPTO examiner to schedule a telephone interview to discuss the differences. The examiner’s contact information is generally found on the last page of the written part of the OA. It might be well to also communicate such differences to the examiner in writing before the scheduled telephone interview, either by email or a facsimile communication, to provide the examiner advanced notice as to the direction of the discussions.
When negotiating with the examiner, the “pro se” inventor may be required to identify where the novel or distinguishing features are in the drawings and the specification of the “pro se” application. The inventor should try to pin point language in the specification that clearly defines over the inventions used in a rejection. While an invention may have various differences, if possible, attempt to find features in the application that the inventions of the other patents could not incorporate. The “pro se” inventor may even ask the examiner during the scheduled interview to make any further recommendations or to write one or more claims.
The “pro se” inventor needs to be very cautious about claims prepared by an examiner as the examiner may write a very narrow claim that may have little practical value or very difficult to enforce. The “pro se” inventor may also seek representation to have only the claims reviewed by a patent attorney or agent or for guidance to amend the application to comply with the OA objections and rejections.
In 2007, the U.S. Supreme Court’s decision in KSR International Co. v. Teleflex Inc. has, in general, made it somewhat more difficult to receive a patent for a combination of known components. Recently, the USPTO has been very gracious to help “pro se” inventors as well as other inventors to obtain a patent. Since the new administration took office, the USPTO is diligently trying to help the “pro se” inventor obtain a patent and recognizes the value of intellectual property rights for individuals and small business.
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