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Patent Examination Types, Part I

Patent Examination Types, Part I published on

During my time in patent prosecution, I have encountered many good patent examiners – those whose office actions are clear, persuasive, technically accurate, and consistent with law. I deeply appreciate these examiners’ efforts, because it reveals a clear course of action to recommend to my client – even if that recommendation is an abandonment.

On the other hand, occasional puzzlement and frustration arise from office actions that are, in various ways, unsatisfying. Over time, I have noticed consistent patterns of approaches to examination that evoke this reaction. Of these examination styles – the “dirty dozen” (edit: ended up being a baker’s dozen) – this article will cover the first three.
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The Challenges of U.S. Patent Examination

The Challenges of U.S. Patent Examination published on

I’d like to begin my commentary about the patent office with an overarching observation – one that I intend to emphasize throughout this weblog:

On the whole, U.S. patent examiners are good people doing good work under difficult circumstances.
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USPTO Talk

USPTO Talk published on

When I began practicing patent law, my conceptual model of the patent examination process was an objective technical comparison of claimed inventions with prior art. Notably, I understood this process to be straightforward, legally and technically accurate, and – most of all – consistent and predictable. For a particular claim, the patent system should identify the same references and produce the same answer, irrespective of the particular art unit, examiner, or circumstances of the application. The internal mechanics of the USPTO, of examiners’ day-to-day lives, should be largely irrelevant to the outcome of an application.

7+ years of patent prosecution have radically changed my understanding of the patent process.
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