Patently Strategic - Patent Strategy for Startups
Patently Strategic - Patent Strategy for Startups
Dealing with Rejection: Overcoming 101, 102, 103, and 112
So, your patent application got rejected. Now what?
In this month’s episode, we’re talking about rejection. Specifically, the type that comes from the patent office in the form of an intimidating sounding three-digit number when your application gets denied by an examiner.
Some time after submitting your application, it goes into a process with the patent office called examination. This is the part of your patent’s prosecution journey where an examiner reviews your application for conformance to technical and legal requirements. If – and usually when – the examiner finds a problem, they will issue an office action that contains specific reasons for the rejection. You then have the opportunity to respond to and overcome the rejection, using various strategies we’ll explore today.
Reasons for rejection fall under four sections of U.S. Statute, Title 35. Sections 101, 102, 103, and 112 dictate that patents must be eligible, useful, novel, nonobvious, and enabled (or properly described). Patents can be rejected or later invalidated if one or more of the claims are determined to be otherwise.
Rejection on the basis of these four statutes is fortunately just the beginning of the delicate process of negotiating this important exchange that has promoted and enabled our innovation economy since the dawn of our country. Patent application rejection is common, expected, and can be used very strategically – but perhaps counterintuitively – to end up with the broadest possible protection, while also making sure there’s something in it for the public!
** Episode Overview **
In today’s episode, Patent Office Relationship Guru Daniel Wright leads a discussion with our all-star patent panel, delving deeply into defining, coping with, and then dealing with patent application rejection. Along the way, Dan and the panel discuss:
⦿ Why patent applications are rejected.
⦿ The specific types of rejection.
⦿ Strategies for how to overcome each, including some wonderful insider insights specifically on how to work with examiners on the human level to overcome rejection.
** Mossoff Minute: Patents Aren't Monopolies **
In this month’s minute, Professor Adam Mossoff debunks the myth that patents in the United States are monopolies that impede innovation and block economic growth.
** Referenced Links **
⦿ Apply to work at Aurora: https://www.aurorapatents.com/careers-patent-agent.html
⦿ Patent Anatomy: https://www.aurorapatents.com/blog/patent-anatomy-whats-in-a-patent
** Follow Aurora Patents **
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⦿ Twitter: https://twitter.com/AuroraPatents
⦿ LinkedIn: https://www.linkedin.com/company/aurora-cg/
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[00:00:00] Josh: G'day and welcome to the Patently Strategic podcast where we discuss all things at the intersection of business, technology, and patents. This podcast is a monthly discussion among experts in the field of patenting. It is for inventors, founders, and IP professionals alike, established or aspiring. And in this month's episode, we're talking about rejection.
Specifically, the type that comes from the patent office in the form of an intimidating sounding three digit number when your application gets denied by an examiner. But isn't that a sad topic, you might be wondering, to be kicking off a new season with and especially ahead of the predictable heartache that comes packaged with the upcoming Valentine's holiday?
To the contrary, to paraphrase life coach Steve Miraboli. Every time you think you're being rejected from something good, you're actually being redirected to something better. No need to stock up on antidepressants or binge on a box of chocolates. In this therapeutic start to our fifth season, we'll be unpacking why rejection isn't the end of your relationship with innovation, but instead, just the start of the [00:01:00] dance.
Sometime after submitting your application, it goes into a process with the patent office called examination. This is the part of your patent's prosecution journey where an examiner reviews your application for conformance to technical and legal requirements. If, and usually when, the examiner finds a problem, they will issue an office action that contains specific reasons for the rejection.
You then have the opportunity to respond to and overcome the rejection using various strategies we'll explore today. Reasons for rejection fall under four sections of U. S. Statute Title 35, Sections 101, 102, 103, and 112. Dictate that patents must be eligible, useful, novel, not obvious, and enabled, or properly described.
Patents can be rejected, or later invalidated, if one or more of the claims are determined to be otherwise. These statutes attempt to codify the constitutionally bound promise of patents to promote the progress of science and the useful arts. They do so by applying constraints to what is considered patentable and by systematizing the grand [00:02:00] bargain of a limited, exclusive property right in exchange for a public disclosure that keeps society moving forward while incentivizing the individual to create.
This property right, unlike the physical property rights that come in the form of deeds and titles, doesn't rely on physical barriers, boundaries, or fence demarcated lot lines. But instead depends on constructs of human language called claims that are further supported by additional context found in what's called the specification of the application.
Rejection on the basis of these four statutes is just the beginning of the delicate process of negotiating this important exchange that has promoted and enabled our innovation economy since the dawn of our country. Patent application rejection is common. expected and can be used very strategically, but perhaps counterintuitively to end up with the broadest possible protection while also making sure there's something in it for the public.
In today's episode, Patent Office Relationship Guru Daniel Wright leads a discussion with our all star patent panel delving deeply into defining, [00:03:00] coping with, and then dealing with patent application rejection. Along the way, Dan and the panel discuss why patent applications are rejected, the specific types of rejection, and strategies for how to overcome each.
Including some wonderful insider insights specifically on how to work with examiners on the human level to overcome rejection. Dan is joined today by our always exceptional group of IP experts, including Dr. Ashley Sloat, president and director of patent strategy at Aurora. Dr. David Jackrell, president of Jackrell Consulting.
Kristen Hansen, patent strategy specialist at Aurora. Ty Davis, patent strategy associate at Aurora. And Marie Smith, patent agent at Brake Hughes Bellarmine LLP. If terms like claims and specification are new to you, I highly recommend you also check out our Season 1 episode on Patent Anatomy. And for our regular listeners, who might be aware of these statutes due to how they are later being misused upstream via judicial interpretation on things like eligible subject matter, and abused recklessly via the PTAB, I'd [00:04:00] still recommend hanging with us on this one since the principles shared will help you craft the most robust document possible.
I'm also excited to be sharing a couple of announcements. First, we're hiring. We have openings for two medical device and software patent agents to join our growing practice. Are you ready to work where you want, when you want, with talented, great humans, looking to promote the progress of science and the useful arts for future defining tech, built by incredible inventors?
Well good, us too. We escape the shackles of corporate life and design a company and roles around fixing most of what's broken in big law and in corporate America. This is a fully remote role with no threat of ever being called back into an office that doesn't even exist. We're a remote OG pre COVID and know how to do it the right way.
Both part and full time options are available. Details and link to apply are in the show notes. Second, we'll be releasing a very special episode next month in which I'll be sitting down with Jeffrey Parker, the CEO of Parker Vision, Amit Vora, counsel for Parker Vision, and Juliet Fessett, [00:05:00] a board member of FAIR Inventing and founder and CEO of Happy Products, Inc.
Parker Vision is currently filing a U. S. Supreme Court cert petition challenging the federal circuit's practice of issuing one word affirmations in cases that hold life altering implications for inventors. This practice is referred to as application of Rule 36. Parker Vision's petition aims to establish a baseline of judicial respect for patent holders.
This judicial reasoning is key to what makes a court decision a valid court decision. Now, speaking of the ongoing patent wars, before jumping in with the panel, we'd like to take you to the next installment of the Mossoff Minute. A monthly segment that builds on our Patent Wars episode and features short conversations with Professor Adam Mossoff, providing updates and quick takes on movements in patent reform, significant court rulings, innovation policy happenings, and occasional Star Wars references.
In this month's minute, Adam debunks the myth that patents in the United States are monopolies that impede innovation and block economic growth.
[00:05:56] Adam Mossoff: One often hears today, especially on the internet and from tech [00:06:00] commentators, and especially sometimes from Silicon Valley entrepreneurs, that patents are monopolies, that they impede innovation, and that there's really no evidence that patents actually drive economic growth, create jobs, and promote innovation.
This is an unfortunate misunderstanding of patents. Patents are not monopolies, or at least they have not been monopolies in the United States. Of course, they started as monopolies. English Crown granted things called letters patent to people. Those were monopoly grants. But the patent system was as much part of American exceptionalism and the break from England.
It's everything else in our country. And so when we started our patent system, we protected patents as property rights, the same as property rights that a farmer has in their crop or an industrialist has in the products that they produce and sell in the marketplace. And this. is why the patent system in the United States has been so successful in driving the industrial revolution, pharmaceutical revolution, the biotech revolution, the computer [00:07:00] revolution, and even today's mobile revolution.
The historical and economic evidence is overwhelming. Patents drive economic growth, create jobs, promote flourishing societies, and promote innovation. The same evidence that's shown for all other types of property rights, whether property rights in land or goods or complex commercial arrangements. It's the same evidence that shows that patents as property rights and inventions works in the same.
[00:07:28] Josh: Thanks Adam. We're also publishing clips from the Mossoff Minute as short form videos on Instagram Reels, YouTube Shorts, and TikTok. Well, at least for now. You can check out these shorts and follow us at Aurora Patents on all three platforms. And now without further ado, take it away, Dan. Welcome
[00:07:44] Dan: everybody.
Today, we're going to be talking about handling rejection. And why those three digit numbers are just the beginning of your patent journey. Because when you, when you begin, when you enter the scene, there's a lot of uncertainty. You're unsure of [00:08:00] yourself. You're unsure of your business, where it could go.
So, so you explore. You find something. You, you discover your technology. This is it. This is the one, the forever tech. You put in that work to make it official, but then boom, rejection. Patent office says no with some very intimidating numbers. But here's the thing, you don't. Unfortunately, you can't break up with the patent office, but you don't need to break up with your application either.
So today, we're going to be walking through that process, what then you can do following that, that big threatening word, rejection. before the USPTO. Today we're going to cover this whole process. So first, uh, how you got here, how you ended up with that big branded rejection from the USPTO. We're going to talk then about those three digit numbers, 101, 102, 103, 112.
Those are the titles or the sections [00:09:00] of Title 35 of the United States Code, the laws that pertain to patents. And then we're going to conclude with looking at the big picture forward and even touch on the benefit of rejection in some contexts. So to get to rejection, you have to do some stuff first.
Namely, you have to invent something, whether that's a device or a method of making something. Uh, you don't actually have to have physically built the thing or perform the thing, but what you do have to do is describe it And a patent application that gets filed before a patent office, like the United States Patent and Trademark Office.
And that application is going to have two main parts to it. It's going to have the specification. Which is a technical description of the invention kind of looks more like a, a scientific document versus followed by then the claims, which are the legal definition of the property, right? That you're asking claims really don't make for a [00:10:00] casual light reading often kind of finicky odd particular legalese as it's trying to mark out exactly what is that property, right?
You're asking for because this, uh, these two halves of the application reflect. The fundamental exchange at the heart of a at the heart of the patent system. A patent is a legal document that grants the holder of limited monopoly on the technology that is granted in exchange. For information. So the idea being, okay, inventors, you get in the United States 20 years from the time of filing the right to exclude others from making, using, selling, importing what is defined as the invention and those claims, but you get that you get that economic advantage for revealing to the public, the makings, the workings of your technology.
So that way that information is [00:11:00] available. Society can continue to develop and prove upon it, but you're still compensated for revealing that information in this limited monopoly. All right. So you assemble your information, you assemble your application, you submit it, and then examiners at the patent office are going to review it according to the laws and comparing it to existing technology.
What's already known what's already available. Okay. And this is where you'll encounter that term prior art examiner's are going to search the prior art, review your application and ultimately issue an office action for the most part, they're going to be either an allowance, meaning, Hey, congrats, you're on your way towards an issuance that actual enforceable document or more commonly, you're going to get a rejection.
Now, there can be a few other types of, uh, office actions you can get. Uh, we're going to skip those for the most part. Okay. Allowance or a rejection, but they got to tell you why they're rejecting your [00:12:00] application. If they are, they can't just say no, they got to give you specific reasons. And those reasons are going to be those three digit numbers again, referring to specific sections of the laws.
That govern patent law in the United States, 101, 102, 103, 112. And while it can seem, you know, very threatening in a sense, you know, it's a very organized set document, here is your rejection, by no means is that the end of the process, because you get to reply. To this office section, so you can argue back saying, Hey, examiner, you misunderstood something.
You didn't get it right. Here's why, or you can amend the claims again that legal definition of what your invention is. You can play with those redescribe stuff, move stuff around, remove terms, add terms and say, all right, examiner. [00:13:00]Well, I've added this. I've removed this element. You need to look again. Um, comparing to the laws and to to the prior art to go forwards.
We'll talk about that in more detail, but critically, you cannot amend the specification that technical document part. That part is set in stone. And so you really need to make sure you have all that set up properly when you turn it in. So that way you have wiggle room, you have space to play with the claims that need to relate back to that specification as you continue as you play with the claims.
[00:13:36] Ashley: I think the point being, no, oh, go ahead. I was going to say, I think it's important to note too, for everybody, um, more so the audience, the podcast is that rejection is highly common, you know, and so we've had some clients who are newer to the process who get the rejection and they kind of freak out, but know that it's highly common.
Like, I would, anybody can amend this number, but I would say, [00:14:00] like. Okay. Only 3 percent of applications that I've seen come through with a 1st action allowance, maybe a little bit more than that, but it's a very, it's a very small margin. I mean, obviously, if you do priority searching and things like that, I think that number goes up, but if you're really trying to go after the broadest, what we think to be the broadest protectable version of your technology, you're going to get a rejection.
[00:14:26] Dan: Yeah, I definitely agree with that. It is extremely common. First first action rejection. Super common. Um, it's kind of the standard expectation. But yeah, if you don't if you don't know that if you're new to the system, it does seem it seems spooky. I spent all this work. I did all this time. What do you what do you mean?
It's What do you mean it's rejected? Uh, but additionally, office actions, in a sense, come in pairs. So, you get a first rejection. It'll be labeled non final, usually. You get to [00:15:00] reply, and following that, you'll get then a final office action, either final rejection, maybe an allowance, and then you get to reply again, although replying after final is a little bit A little bit narrower with what you can do, but even if you don't get it in that first pair, that first set of actions, you can pay for more rounds.
Process can keep going. So a request for a continued examination is the common way. And in certain circumstances, it's actually helpful to file continuing applications instead. So it's just, uh, you get some new numbers, the specification in most cases will be the same. And you can continue the process again, keep it going, keep trying to get to get that issued patent.
But now we're going
[00:15:48] Ty: to look at what before you jump from there. Um, Daniel, sorry, jump in. Um, I know that, you know, the final is is an option for the examiner. Has anybody on the panel [00:16:00] ever seen where it wasn't non final than final? Has anybody ever seen like 2 non finals?
[00:16:06] Ashley: There is what's going to say there is a provision.
It's rare that I've seen it, but it's. And if you want to go ahead and speak to it, Kristen.
[00:16:14] Kristen: Sure. It happens all the time. Uh, you can get another non final if you do not amend your claim and force the examiner to do another round of searching. Then, they kind of have to come back and they can, they can go final if it is still the same argument in like, let's say it was a one on one rejection.
But if it's an art based rejection, And the examiner was not forced to do an amendment. I'm sorry, to assess an amendment because you didn't give one, they can come back and be forced to give you another non final rejection. Um, Marie, I know you've had scenarios in this case. Do you have alternatives that you've seen this happen in?
[00:16:56] Marie: So, I guess the simplest way I look at it is you can get [00:17:00] another non final if the examiner has to use a new ground of rejection that is not based on your amended claim. So simplistically, if you just argue and you don't do any amendments. And the examiner comes back and still gives you a rejection, but now maybe introduces another piece of art or a different art.
They cannot make that final. And I think the logic behind that is you need to be able to address a rejection with arguments and or amendments before, um, how can I put this, you need to be, you need to be able to address. Whatever the examiner gives you for rejection properly. In response to what he gives you.
So if [00:18:00] it, he has to go non final again because you've never had that ground of rejection. You've never looked at that for the same claim language. You had one round of rejection in the claim language. Now the examiner comes back and says same claim. Oh, I'm changing out this art. I'm adding another piece of art.
Based on your argument, you have the opportunity. To argue that once you argue that if the examiner comes back and maintains the rejection because that's happened. I do know amendments. The examiner comes back and goes no disagree with you. This is final. And you deal with it then, or if you amend, and then the examiner rejects the claim based on the amendment, i.
e. they introduce a new piece of art to get at that particular amendment you may have, or they find that feature in the current art. So that's how I kind of look at the process.
[00:18:53] Ashley: You're kind of saying, Marie, that if you. Simply argue and don't amend, and [00:19:00] your arguments are persuasive, you are then likely getting another non final.
Whereas if you don't amend and you argue, but your arguments are not persuasive, or you amend and provide arguments and they use the same art. then you are likely getting a final rejection.
[00:19:20] Marie: Right. Or you amend and you argue, and they may introduce a new piece of art based on your amendment, you will still get a final rejection.
It's tough because sometimes, um, you may have to Do like I this is a long time ago where I kind of, uh, fought the fact that the examiner had gone final on something and was successful in recent years. I have kind of been unsuccessful as the examiners try. Just skirt that. And when they lose counts, right?
Yeah. Kristen, their counts, if they do that, it really kind of kills their counts.
[00:19:59] Kristen: [00:20:00] Yes, and when Marie says lose counts, it means basically for a second non final that an examiner may give you, they do not receive any kind of count. It's basically free. Work. They have to do it for free. It kind of indicates they screwed something up, um, and didn't cover everything they should have in the first round.
So they don't like to do it. Basically. Yeah, cool.
[00:20:28] Dan: Thanks. All right, yeah, so, uh, there's a variety of circumstances where you can get more than more than 2 here, uh, in standard practice with often you are making amendments, things like that, uh, the process. Mostly looks like getting, getting two, uh, but absolutely there's circumstances where you end up with more.
But now we're gonna be looking at those specific numbers. Now, each one of these [00:21:00] different sections is, is worthy of, of an own, of its own episode. But to give a, a survey of what each of these, these can be, we're gonna, we're gonna go through them one by one here. So we're gonna start with 1 0 1. Most commonly, this will be a 101 rejection has to deal with eligible subject matter.
So, in short, your invention, as claimed, must be A process, a machine, a manufacturer, composition of matter, there's some fuzziness between a manufacturer and a composition of matter, uh, but that's really not, not important in the grand scheme of things, but we're, you know, inventions are going then towards, uh, devices, uh, Software, um, for the most part, uh, things like pencils, fertilizers, technology, as patents are concerned with technology here, but your invention cannot [00:22:00] be an abstract idea, a law of nature, a natural phenomenon, or a product of nature, unless the inclusion of one of those exceptions It contains significantly more is the term out of out of the famous court cases to put this more.
This is perhaps better discussed with specifics. So we're going to look at what is where do these most commonly show up? And so abstract ideas this more commonly shows up for software and computational technologies. Is that the examiner? You might get something that says, well, hey, like, you've just recited.
mathematical equation. You've just recited business practice. Uh, there's no, there's no technology in here. This is something that can just be done in the mind, albeit tediously or with a long time. There's nothing technological in here. [00:23:00] And to overcome this, you need to move it to, to, uh, stronger, greater technological focus.
However, reciting standard computer technologies, computer equipment. Oh, well, it's just run on any old processor. It's run on any old, any old drive. That's not going to cut it anymore. Yeah, it's got to be specific. It's got to demonstrate how it achieves some sort of like material result, practical result, or it demonstrates a new and improved result for Computers themselves or related tech.
So if you get a one on one rejection for software, you're commonly welcome to again, recite more than just any sort of math, recite more than just the business practice. You need to move it towards specific technology. Laws of nature commonly show up in more biotech type stuff, so for, uh, namely [00:24:00] diagnostics is a common area where this, we've seen this, uh, where the examiners come back, hey, you didn't actually invent anything, your claim just is correlating a certain biological state with a known diseased state.
And this is just, um, of course, you know, this sort of disease causes these sorts of hormone levels, chemical levels within the body. There's no technology in that then. Sure, it's useful information, but there's no technology in that. And so the way through that is similar to software. You need to make it more specific, you need to make it more technological, more material.
And so you're going to be, but Like how you can't just claim normal computer equipment you need to do more than standard lab claim more than standard lab procedures or standard data collection. You can't just say alright well like draw some blood and then test the blood [00:25:00] like that's a pretty standard procedure.
You need to work towards more specifics. What reagents? What are you testing for? How are you testing for that? For the indications rather than. Elevated level of X means that you have Y disease. And finally, natural phenomenon products of nature. That often comes up, uh, comes up more often with pharmaceuticals, food, things like that.
Uh, you can't just take something from nature and spin it around as your own technology. The idea being, well, like, you didn't Again, no technology in that. You didn't invent that. You maybe noticed it out in nature, but the thing itself, that's not technology. That's just available in nature. So way around this is you do need to modify it in some way.
Even, you know, taking a natural product and even just changing one chemical [00:26:00] group on it, uh, makes it unnatural. That can be grounds for patenting, or if you combine things from nature in a way that aren't naturally occurring. So, you know, you've got three components that themselves you can all go find somewhere out in the wild, but they don't occur together in a, in that specific combination.
Um, that therefore is more in the realm of an invention. And so to respond for these, you're commonly looking to amend your claims, but because, uh, because of how established these one on one concerns are, this is something that you should kind of be able to see coming from the drafting point point of view.
If you're working in software, software, software, If you've got a software application, you should kind of write this with an eye for towards potential one on one concerns, so making sure that specification includes valuable material details [00:27:00] towards its technological implementation towards specifically how it operates.
What sort of material effects does it generate in the world? Because sometimes we'll tackle trying to acquire that breadth for your application. It can kind of wander, wander a little too close, perhaps, to some of these one on one concerns, and then you'll get the rejection. Uh, but this is, again, the sort of thing that you should be prepared for going into the examination because of how well established these, these one on one concerns are.
Uh, but for this, you're normally amending the claims, arguing that understanding of how the claims do result in material, uh, technology, as opposed to abstract ideas, as opposed to something, uh, taken from nature.
[00:27:48] Ashley: And I think that's where, you know, it's important to, to your point, Dan, with spec drafting, and I'm sure, you know, Kristen and Marie, in particular, probably could weigh in on this, given their kind of software background, but, um, including, you know, [00:28:00] also practical applications, which is, you know, a different lever you can pull besides the something more, like, how is your technology practically applied?
If you have a simple diagnostic that's getting a natural phenomenon rejection, you know, yeah. That might not help you much, because obviously diagnostics are being practically applied and they're highly useful. But, um, pairing that also with technical improvement. So, if you didn't do routine PCR. Or blood draw, but you actually had to do a unique thing to be able to get stuff out of the blood or whatever.
Then those are also technical improvements that you need. So really thinking critically around how your technology or whatever diagnostic or whatever is structured every single step that you had to do to make it work. And is there anything you can pull out of that to include in the, in the beginning of your detailed description?
[00:28:50] Dan: Yeah, absolutely. Alright, now 101 does contain a, a less common, commonly addressed element, uh, towards [00:29:00] utility. So your invention must have a specific, credible use. It actually has to, has to do something. It can't merely take up space with no function. That's, that's called art. And I'm, I'm a big fan of art, but art is not, it's not technology, uh, for the purposes of a patent.
And so you actually have to say what the thing is, what it does, uh, and this includes, uh, this actually bans kind of just vague statements of biochem. Can't just say that your compound has biological activity without specifying, okay, well, what's it affecting? What proteins is it interacting with? What changes does it, does it affect?
You actually need to give it specific utility. Uh, that utility need not be perfect. It need not be the best thing ever under all circumstances, but it does need to do something, uh, because if it's completely inoperable, That means it's not [00:30:00]useful, and so this is how the patent office rejects things, you know, inventions that claim to use magic powers to result in things or perpetual motion devices.
These things don't work. And therefore it is completely inoperable. It lacks utility rejection. Curiously, this also contained historically some morality implications. There is a 19th century case that ruled that useful meant improving society for the betterment of society. And this was used up until about in like 1940s to reject things that were deceptive to the public.
So techniques or tools that tricked consumers into thinking it was higher quality than it actually was. Also some gambling devices were rejected under this sort of morality grounds. [00:31:00] Historically, uh, that's That's largely gone. It is gone these days. Um, no, no morality, no morality assessment on your case now.
These days, although every now and then there's talk kind of wanders in or floats up regarding cloning, a lot of biotech, things like that. The conversation peaks up again of should as a society, we be, uh, incentivizing. Certain veins veins of research, but that is a whole another topic. It is very unlikely.
You will ever see a utility rejection. Uh, and this is really something that has to be set up for in the specification and drafting. Hopefully somewhere in there. It is clear what. What your thing is for.
[00:31:51] Kristen: So Dan, sometimes I'll see this kind of utility rejection if somebody drafted up a software case and forgot to put the output step in the claim, [00:32:00] and so it just kind of hangs, um, but I think it's the same and predictable and unpredictable art where you really are looking for some sort of output or use or technical effect, right?
Which is what we put in the spec, hopefully, but it doesn't always make it into the claim. So sometimes you can see utility rejection because you just didn't take it far enough. You know, in the claim itself.
[00:32:22] Dan: Yeah, it makes sense. Yeah. If your software claim is entirely internal to the software, it never results in anything.
I can see, you know, how, how useful is that? It's, it's all all numbers behind the curtain moving around. Yeah.
[00:32:39] David: Is this also the bucket where things go that are federally illegal? You can't patent things, right? Or is that a different? That's only trademarks.
[00:32:48] Ashley: I don't think that applies to, um, that only applies to trademarks.
There is no legality. You know, cannabis is being patented before cannabis. Well, I guess can is not that illegal yet. But, [00:33:00] um, yeah, there's no, as far as I know, there's no morality. Component of patent. That's only a trademark issue.
[00:33:07] Dan: The only the only one I know off the top of my head is you cannot patent a human being like a total person.
You cannot patent a total person.
[00:33:17] Ashley: Man, I was gonna patent my kids.
[00:33:21] Dan: Um, but, yeah, I think that's the only current morality assessment. Next section, 102. Novelty. You'll also see this called as anticipation in, uh, in the jargon. This is because patents are supposed to go to new inventions. Something new that's never been seen before.
If you just patent old things, well then you can trap society, uh, in these monopolies when no actual new work has been done. So, you know, Patent Office is concerned with newness, [00:34:00] and this is going to be the first of those prior art sort of rejections. This is going to be, examiners are going to go look at, What else has been known?
What information is generally available? And if they find a single reference that contains every element of your claim, there's a novelty rejection. Now the, the technical field of that document is actually irrelevant. So you can end up in a case where I'm in, um, yeah, I'm making fabrics, but then somebody over in, um, I guess a chemistry application has some new polymer and perhaps I was using that, uh, or a similar sort of using quince didn't know that someone had already invented this polymer in another case using it for a fabric.
Well, if you're All elements of your claim [00:35:00] read on to that, uh, that polymer on face value. It seems like a mismatch. Well, they're doing just raw chemistry, and I'm trying to make clothes. Uh, doesn't matter. They got to find every single element, and then you get that, that novelty rejection. Now, this seems oddly specific.
You know, how could, how could someone find exactly every element, uh, with how much stuff there is to think of to make all the variations? This seems like it would be rare, but it's more common, especially when you think of it in terms of uh, how claims are commonly written to be broad. So for breadth, if you either only name, if you have a huge list of options, you leave it really open as to what things could be, the examiner only needs to find one example, one part of that big or in your claim in order to meet it.
So 120 different [00:36:00] possibilities, if they're all connected with or. The examiner finds one of them. Well, they've now matched on to that intentional limit of the claim. They found it. They did it. That's a novelty rejection. So to respond to this, you can argue back that they've misidentified an element. That sometimes is true.
More often, though, you are amending your claim. They're going to be looking at that cited reference because they have to give you the reference. They can't just say, I found it, and not tell you where they found it. So you're going to be looking at that reference and amend your claim to contain something.
To necessitate something that that reference does not have. So often this looks as, you know, you're going to promote elements from dependent claims. Uh, some details that you at first, you know, just wanted as an option. Well, okay, now it's something that is required in that broadest claim. [00:37:00] And some places you can eliminate options from big lists.
That's making it more specific instead of it being A, B, C, or D. It now just can only be A or B. And things like narrowing ranges, if you, it's same idea as, as the previous option there. Now, again, all of these changes need to be supported in the specification. You can't just introduce new details, new limitations that weren't in that specification before.
The patent office sees that as, you know, you're surprising the public. The whole point of this is to disclose to the public what you're doing. It's part of that exchange. If you now suddenly just add more stuff, during examination that's that's not fair to the public. So all these changes need to be set up in your specification, listing out some of these examples, uh, and different specific combinations thereof.
Now this is, uh, [00:38:00] how much your room for making selections, your opportunity to make selections and narrowing amendments, that kind of varies based on jurisdiction. So if you are filing patents abroad as well, do be careful and consult with your practitioners because, for example, U. S. is fairly loose on just kind of picking stuff out of the specification and throwing it into your claims.
Europe, on the other hand, is not. They're very specific. They want to. They want to. If you pick a new combination, Europe generally wants to see that specific combination of claim elements specifically discussed in that specification in advance. You can't just pick stuff out of lists later, uh, and assemble whatever combination you need.
So that's, that's some broader strategy based on where you're going to be filing, but something you should be thinking about while assembling your application, while drafting the [00:39:00] application.
[00:39:00] Ashley: I think one other quick note to where I mostly and again, feel free to anybody else to weigh in a lot of times where I've actually seen novelty is that.
I wouldn't say the examiner has misidentified an element, but, you know, humans are humans, and every person reads a word differently than another human, and an examiner gives the broadest reasonable interpretation to a claim term, and, you know, while we as drafters also need to be thinking about that interpretation.
Are how I, you know, think that a term is going to be broadly defined versus how an examiner is going to broadly define it may not be the same thing, right? I may be seeing a triangle and he's seeing a square, right? Um, both are polygons, but so a lot of times when I see a 102 rejection, which actually I would argue are pretty are like, are rarer.
I think if you look at statistics of. Cross units PTO 103 is the you know by by far the lion share and it's because the examiner is saying. If I [00:40:00] really broadly look at this claim, this is what all these things mean, and then he finds art that supports that, whereas if you look at your claim terms and say, well, that's not what I meant, I can see how you arrived at that, but I need to clarify what these terms mean through amendments to make sure that we're on the same page for what's actually being claimed here, and I feel like that's more often what happens with novelty is that there's a misalignment on claim term interpretation.
Or, you know, or invent interpretation, you know,
[00:40:33] Dan: yeah, no, that's yeah, that's that's totally, um, totally how it can go down. Because as as drafts people, we have the opportunity to define the terms. However, we want. And as you said, be careful with how those terms. Are generally implied or generally understood, and then perhaps you end up with an accidental like equivocation, uh, in the communication between between you and the [00:41:00] examiner.
So, yes, being more specific and making sure that if you mean something particular with a common term and make sure that term then clearly is, is. Uh, clearly stated to mean that particular particular bit in the specification. So you can use it. Use it later. Right.
[00:41:21] Kristen: And a practice tip for what Dan has said and what Ashley has said, you know, if you see this misunderstanding in a rejection, this is why you get on the phone with the examiner and you interview your case, right?
This discussion, if it were never to be had, might drag this process out another two or three office actions because the same misunderstanding is just So it's a great way to get on the phone with your examiners.
[00:41:50] Marie: Yes, I just want to second that. That's where an interview becomes really important. Also, I think now, it's [00:42:00] always been this way, but recently I think more there was a lot of interest in advancing prosecution.
They have a backlog and they want to move these cases along. I've been fortunate enough recently to have discussions with examiners, not only in this realm of interpretation, but also I have had examiners come back and say, Hey, you know, I looked at your spec and I noticed this and these paragraphs. I don't think I've seen anything like that.
It's something you may want to consider. So. Don't always have to agree with or go along with what the examiner presents, but that can be pretty valuable if if you want to move things along because you know that the examiner has now looked at everything and may have thoughts about other aspects of the [00:43:00] invention that they feel they've seen before even though they're not presenting an argument for Um, and they're trying to kind of give you a little bit of help.
So that's where I think the discussions come in really are very valuable and talking to the examiners
[00:43:14] Ashley: actually all add two things to that is one. We actually had time. I had an examiner that actually. Told us about additional art in an examiner interview that they had not presented yet and was like, here's an additional piece of art y'all wanna consider, which like that was unheard of.
And then the other thing that I like to do is include inventors on examiner phone calls where possible, because it breeds empathy. To Marie's point in there, seems like examiners are more willing to work with you and help you come to a resolution sooner. When they get the more net that we're not humans, but, you know, I have an inventor as we more skin in the game.
And it also shows that this person's like a real person trying to build a company or whatever. And so they're much more likely to kind of go those extra pieces to try to get you to a resolution [00:44:00] faster than, you know, nickel and diming. And, you know. Causing the process to be too long.
[00:44:07] David: I've absolutely had that experience, too.
And it's funny. You mentioned that telling us about prior art that exactly happened to us recently, too. And having the examiners, having the inventors rather on the interview. I do think it can be really helpful. I have one story about that is the examiner actually told us they like, really? Oh, you know, they, the inventor was on the call and told the story to the examiner about the startup and the company that they had and what they were trying to do.
And the inventor said, really want to support your. Startup in your business. Um, uh, you know, that's, I really liked that and, and, and it made a difference just connecting with the examiner and getting them to see what we had, that we really did have something unique and then like you said, actually like help [00:45:00] us actually, and Marie, what you were saying to help us figure out what we could possibly.
What would differentiate over what they were looking at in the art in their mind, and as they were interpreting all the claim terms, uh, so yeah, I definitely agree. Yeah,
[00:45:16] Dan: no, uh, bridging that gap, uh, really kind of connecting there with, with the examiner can really help move things along, as opposed to just passing these, uh, formal documents back and forth.
Uh, but related to this, those final point, uh, that kind of want to don't. Most cases, you don't want to be over narrowing for what you need. If the examiner has come back and, you know, shown, all right, well, you know, here's, here's something and it's missing a, b and c, you don't need to go at a, b and c.
Adding an a might be enough to overcome this novelty. Uh, there's maybe an instance where you just really want a patent and then being [00:46:00] more narrower up front. It's therefore faster, but for the most part, you kind of want to let the examiner do that analysis and kind of help guy. What are the minimum changes that you need to make to get through this?
And talking to the examiner is a great way to speed that speed that analysis along very similar to one oh two one oh three. It's called non obviousness in in foreign jurisdictions. You'll also see this called inventive step and it's very similar. to 102, and then it's another prior art rejection. But in this case, it's going to involve multiple references.
It's all right, couldn't find each and every element in one reference, but I could find all the elements in multiple, uh, references, multiple documents, or I could find them all in a predictable combination. So I found A and B in one application, one document I found C and D in [00:47:00] another by a predictable combination of these two documents.
We arrive at your at your invention. That's that's the argument how the examiner will phrase the argument. This can also look like, you know, we're just making simple substitutions. We're taking all of one document and I'm making a simple substitution for an element that results in a predictable change here.
Predictable consequence. Then we arrive at it. Uh, you'll see this phrased as in these documents teach the elements. They suggest the elements. They motivate the elements here for this combination. Uh, and ultimately, again, they have to find every element of the claim. If they're missing 1 doesn't count.
They need to comp the examiner needs to find every element as claimed that in a combination forms a predictable combination that includes this motivation to [00:48:00] put it put it together. And so responding to this is normally a combination of amendments and arguments, but sometimes just either or. So again, like for 102, if you add in new elements that weren't in that original or weren't in that combination, well then you're outside.
You're outside of that rejection. The examiner either has to, you know, it's going to allow it or find another reference that contains it. Uh, you can argue that they misidentified an element like we were talking about before for 102, but a more common argument tactic here, and perhaps a more successful tactic, is to demonstrate In argument, a lack of predictability between or in in the industry in the specific subject matter and relatedly a lack of motivation, a lack of understanding, a lack of predictability to combine these things.
So, you know, [00:49:00] demonstrating, Hey, examiner, these are unexpected results. These are, you know, we've had, or in some cases, you know, look. You've said you've found these documents that contain it all, but we have had immense commercial success with this when there's been long felt but unsolved needs, or like other people have tried to do something like this for a very long time and it all failed.
Like this is demonstrating all that lack of predictability in how it's going along. So no, it wouldn't be obvious, even though you may be found what looks like these claim elements around. It would not have been obvious to a person of skill in the art. That's the, you know, fictitious example of the person they're considering.
To whom is this obvious? A person of skill in the art. Um, yeah, this is not predictable. Uh, you would not be guaranteed. There's no suggestion that it's a simple [00:50:00] substitution results in this. This actually was inventive work to arrive at what's been claimed. Uh, relatedly a little bit different. You can also argue that there's no motivation to combine these things specifically if references teach away from, uh, from particular claim combinations.
So, for example, if you find. If one of the examiner's documents says, like, hey, uh, don't do, you know, thing A just doesn't work. Meanwhile, the other reference that's being used in combination is doing thing A, and maybe has some other details the examiner's pulling in. That's a ground for an argument of, hey, examiner, these references are actually incompatible, and this actually demonstrates the inventiveness of what we've claimed here.
Because one of your documents outright says, don't do the thing. And this other reference is doing the thing. One of skill in the art would look at this and state, Well, [00:51:00] we can't put these together. Can't combine these. They're incompatible. Therefore, as claimed, our technology that did combine them, potentially, is inventive.
So a lot more opportunity for different approaches into arguing, arguing against non obviousness here. But the final concern with all these arguments is whatever arguments you make in a case's prosecution during this examination process, they're on the record and you need to be prepared to stick to those arguments down the road.
Um, if a case ever and, you know, you can't argue. You can't argue thing a and then turn around later and argue not thing a specifically later. That can get you in trouble and certainly in court cases as well. If you ever get in and end up in a litigation suit over over a patent,
[00:51:56] Ashley: and this is I have to. And this is I tell clients when, [00:52:00] um, for why to do prior art searching then because um, you know, I'm not sure what that is.
Um, and then incorporate your learnings into the specification. I'm not a fan of, um, particularly pointing out exact references in the spec and saying this one teaches this and this is how we're different. But what I am a fan of. Is kind of saying, you know, that, you know, conventionally or traditionally, like, this is kind of what's done and here's how we're different without pointing to the exact reference.
And what it does is when you are drafting, you are in full control of the narrative, right? I can choose the words. I want to use and how I want to use them. When my back is against the wall during prosecution, I, you know, I still have choice in the words I use, but I may have less choice, right, if I want to move the ball forward for my client.
So, I rather bulk up the specification to the best of my abilities based on prior art searching and, you know, client understanding of the field and all that kind of stuff so that I can already draft arguments into the spec so that the, you know, we control the narrative because that is [00:53:00] public, that's going to become public, you know.
And so then we can control the narrative versus having our back against the wall and being forced to say something that maybe you're less that's less desirable.
[00:53:10] David: Yeah. And I agree. And I'm being able to quote those things in your response. Uh, hey, we knew about this. We, you know, and this is right in the specification.
We anticipated that. I think that's powerful. To the examiner. I had a question. I'm curious to people what people think about the so called one reference 103 rejections. So you get these when the examiner says this one piece of prior art doesn't include this feature of your claim or this limitation, but that's just an obvious variation.
Or, um, that's just a known, that's, that's, so I've seen this before where examiners say, oh, that's just well known, and they don't give a reference for it. It's inherent
[00:53:52] Ashley: in it.
[00:53:52] David: Yeah, so I mean, I, we, I, my inclination a lot of times is to push back and ask them to cite, you know, if [00:54:00] this is so obvious, or if it's such an obvious variation, show a reference that someone did it.
Um, but I'm curious to see how other people kind of respond to those things.
[00:54:09] Kristen: So for me, it depends on how good the piece of art they found is. If that is pretty darn close to what we're doing, I'm willing to forgive that a little bit and, and not address it, not create a stopple, and actually just respond with an amendment, and a different argument that doesn't say anything about, you know, the lack of reference.
If it's weaker, I'm more likely to push back arguments only, and almost force the issue. Where they have to come back and give me that second final or they have to call me and say I was wrong. I'd really like to allow this case. If you added this element that we discussed in the interview, maybe I would allow it.
You know, it pushes them into different territory.
[00:54:56] Dan: Yeah, that's, uh, again, the agree [00:55:00] with Christian, the exact point there, how much, how much is the, this, the examiner, um, slacking or trying to save time as, yeah, I found something really just super close here. Let's go from there. Or is this I don't actually want to go find this.
I'm trying to take an easy argument out because, yeah, the, uh,
[00:55:25] Ashley: Yeah, I think the other thing is too is being honest with yourself and with the client. Like when you start building portfolios, just because you discover new properties of your technology, this happens kind of in the chemical sciences, just because you discover new properties. Um, and it doesn't necessarily make those new properties protectable if the composition was the same before, right?
If your composition never changed and you just discovered new properties, then those new properties might not be protectable because those properties always existed, you just didn't know that they existed, right? [00:56:00] But if those new properties confer new benefits, like, you know, Um, a new method, like if you were only using in a particular method of treatment, and now you can do a new method of treatment because, you know, then maybe you have something right.
So it's also because even if you, you know, even if you could argue something, you know, should you, because is it really honest? And if it were litigated later, could you say with a straight face that the client, you know, that this was actually material and different and they weren't inherent and all that kind of stuff.
So I think it's also just. Knowing what your client has been up to and whether you should or should not do something.
[00:56:35] David: Yeah, that's an interesting point, too, about sort of functional versus structural language. If that missing argument is functional, or missing element is functional, it could be a bit more difficult.
Or, like, they have more leeway in saying that it's a method of use or, uh, obvious variation.
[00:56:53] Kristen: I mean, mechanical arts uses this as a design choice. This is an obvious design choice in a lot of rejections, and that [00:57:00] is painful. Yeah.
[00:57:01] David: Yeah, exactly. I agree. Exactly. It's hard to, it's hard to respond to and interviews can be really helpful there, right?
Well, what exactly? Look at all these figures of our application. Look at all these figures in the prior art. There's clearly differences here, right? You know, you're often in that situation, right? It's just that what language do we put in the claim to get you that those differences really, um, um, explicit enough that the examiner is comfortable allowing it, right?
Right.
[00:57:29] Kristen: Yeah, you know, I remember a story from Marie who was on this call. Uh, she said, I'm color coding my drawings. I've got all these colored pencils out because I've got to show this and I've got to show what's different and I can't just point to it. I've color coded it all. And so she had done that for an examiner interview and, and, and it worked.
It was great. Oh, gosh, you bring it back.
[00:57:50] Marie: That was a lot. I literally took out the pencils and it was one of the first, um, Webex calls. It was right when the, [00:58:00] um, office was starting those calls, and for mechanical cases, it made it really a lot easier because I could show figures, and I, and I colored them, and I put them up, and it was the, because I couldn't even figure it out by creating.
I had sharpened my kid's colored pencil. I color this, this. Because it's hard to see in a black and white drawing. The other thing I found in mechanical cases, and I don't do a lot of them, but, um, to include a figure that shows a very general picture of what the item is. So as you go through its breakdown, you can kind of show how it works and sometimes that design choice.
Um, you can argue around it because you can show how it could not necessarily be just that [00:59:00] because it's something had to be done in order to make it work in order for C to fit into D to then fit into E. It had to be done a certain way. It wasn't just a choice kind of thing. So I've done a lot of that to try to.
That's another thing to explain how these things work and. I did a lot of hinge stuff, and it's kind of tough without having an actual working item in front of you to show. But, um, that got me over one or two, I think, of those kind of design choice arguments, because it was more than that. There's other criteria that had to be brought into the picture in order to get the final product to work properly.
[00:59:44] Dan: Great. So 1. 12 is the final of the potential rejection. categories. This has to deal with written description, clarity, and enablement are the terms. These are all have to do with the [01:00:00] intelligibility of the claims in relation to the specification. Commonly, this has to deal with, uh, clarity is the more common one you get.
So, you know, does this actually make sense? There's a lot of grammar, syntax, there's, claim writing has its own careful Format of term claim elements being phrased in specific ways repetitively so that it is specific. It means only this. You can track the claim elements through breaking. Some of those practices can end up with clarity rejections of by how claims are written.
This doesn't make sense. This doesn't follow and then enablement is this more specific towards. All right. Does the technical aspect of the specifications support the specific, uh, the specific phrasing, the selection of elements in a claim? Uh, all of these, Scale, you know, it's understandable to again, a [01:01:00] person of ordinary skill in the art.
It's not just any person off the street, but normally a, you know, someone who is already versed in in these matters in this technology. So you don't need to, you know, present textbook level. foundations in your specification to arrive at the claims. Uh, you're starting then with someone who is already skilled.
That's the perspective, but someone who is already skilled, do they understand what these claims mean? Is the relationship between the claims and the specification sound? Is it sturdy? Uh, critically, again, you cannot Amend the specification. So that is something you need to be careful. Just setting it up up front that if you are going to be using common terms in different ways, make sure that those definitions are clearly provided in the specification and the specification.
Either then you're going to be relying on those definitions, or you're [01:02:00] going to be amending the claims in order to fix some of those those grammar issues I've seen. But sometimes just, you know, there's a typo makes its way into a claim. It's now confusing examiners like, Hey, this claim doesn't read anymore.
Great. Easy fix. Fix the typo. Move on. I have had cases where the examiner missed one of my specific definitions. Like in the specification, I clearly put brackets, so purely limit define. I'm using this term in this specific manner. And then the examiner is using a different interpretation of it. Doesn't understand, you can say, as per this section, I'm using it in this way.
One of skill in the art, having read the document would understand that I mean, specifically this. And all right, great. No amendment needed. We move on. If you do end up in a situation where the specification is lacking critical bits, the one thing you can do in the United States only is file a [01:03:00] continuation in part application.
It's the one way that you can add to the specification. This causes some funny business with priority dates, and therefore then what art can be applied to, uh, to your claims during examination. But it is worth mentioning here, if you do find yourself in a situation where something got left out in the United States, There's recourse for that, although it gets complicated.
[01:03:30] David: Agree with that totally. One minor nix that came up recently and I never even had thought about it. If you're within one year of your original priority date, you actually can. Add to the specification. It's a file, a continuation in part, if you will file a new application in those foreign countries claiming priority back to the first application with new matter added.
So it acts like a continuation part, but it only works within the first year.
[01:03:58] Ashley: So you're basically saying, [01:04:00] Dave, stay within that because any foreign filing needs to be accomplished within 1 year of the earliest date. So you're saying if you're in within that 1 year still, and let's say you already pulled the trigger on foreign filing.
I mean, this would be like, yeah, super rare scenario. But if you're within that one year, you could still do a quick. Update and refile it and then just stick with that later one and maybe abandon the earlier one or something like that. Right? Or keep both and see what happens. Exactly. Interesting. Yeah.
[01:04:29] Dan: Yeah. I'm part of that.
[01:04:30] Ashley: All
[01:04:32] Dan: right, so taking a step back, looking at this whole process and what you're what the aim is. So when you look at a broad claim, uh, and often in most cases, one is looking for broad claims because with the claim being the legal definition of the invention setting the boundaries for that property right abroad claim means more protection in the sense that you're now have [01:05:00] that right to exclude over.
More variations. Other alternatives all fit under them. This claim you can stop. You can exclude those activities, but because it includes more variations, more options that therefore broad claims can be easier to reject. In a sense. And so on a regular timeline for most clients, and because of this long, you know, this process where you get multiple office actions, the strategy is often to get rejected once.
We're gonna put forth our, our honest, broadest interpretation claim from our understanding of the art, uh, with what we believe, you know, you have indeed invented over what's, what's else out there. Let's put forth the broadest thing that we can. Make the examiner do that work, do that analysis, and then we'll narrow it down [01:06:00] accordingly.
So ask for too much and then have it cut down to size. Whereas first action allowance, where we turn this in and for, you know, the examiner comes back, great, you did it, here's your patent. That can often mean you started too narrow. He didn't ask for enough. You had too many specifics in that claim. That indeed meant there was nothing out there that could approach what you got.
You might have left some claim scope on the table. So a way to think of this is that rejection is a tool to find that true scope of your invention. Use it as an opportunity to find, okay, on what part of this industry does Does, uh, does this technology fit again? Asking for too much first makes it easier to cut down as opposed to expanding later on.
[01:06:55] David: It's a great point, and I think it's underappreciated sometimes, and just to add one thing [01:07:00] is it can be a good use of a dependent claim, where sometimes we think of dependent claims as like planned retreats, so maybe all the independent claims get rejected and most of the dependent claims, but these few dependent claims actually get allowed, and then you can fold those into your independent claims, so I don't know.
I guess it's not. It's not really a first action allowance, but there is some allowable content. Um, and, uh, I think that, you know, that that can be a very efficient way to go, uh, shows you sort of found the edge in at least 11 of the edges, I guess, of the space.
[01:07:38] Dan: Absolutely. Yes. Structuring, structuring the claim set for this variance as fallbacks.
That is, um, it's expeditious. And I think examiners also like they like to work with that. They like to see. Okay, you're you've got these backup plans in mind and integrating elements from dependent claims into an independent claim isn't. It's an easier thing. It's [01:08:00] more palatable for examiner on paper than pulling new stuff out of the specification.
They're less concerned with new matter introductions. If you can clearly say, all right, I'm moving verbatim claim element out of claim 8 into claim 1. It's a cleaner thing to do than saying, hey, I'm pulling this sentence out of paragraph 256 into claim 1. And yeah, it just makes it all just move, move a bit, uh, bit more smoothly.
Since it's in the claims, the examiners are going to more, they're going to search it. Up front. So then they've done that analysis on the go. Uh, when you're ready to make that assessment. All right, that is it. We've there reviewed the how you ended up here before examination. What went into that application and then how that material gets described or gets examined what those four main [01:09:00] sections of the United States patent law code influences informs those rejections.
How you can amend or argue against 101, 102, 103, and 112, and then the broader scope of what that rejection means. Does anyone have any final points before we close?
[01:09:20] Kristen: Just one. You can receive all four of those rejections in one office action, and your practitioner will be put to heavy work responding.
[01:09:29] Dan: Yeah, they are not mutually exclusive.
[01:09:34] Ty: Yeah, and I'd just like to add, I know Danny. Touch on this repeatedly, but just to beat the dead horse a little more, you know, don't be intimidated by that, um, by rejection, kind of speaking to the pro se applicant, you know, the first patent application I filed, which was in 2016, I remember I put so much work into it, you know, albeit I didn't know much about the patent system, [01:10:00] but I got hit with that rejection and I understood that as, you're done, you know, not that we're opening negotiation, it's.
That's it. You're rejected and man, a lot of wasted work, um, by taking that as a, as a final
[01:10:18] Ashley: and also just to, you know, as and I think tie, you would agree to the statement. Don't do it pro se.
[01:10:24] Ty: Yeah. Yeah. That's a big takeaway.
[01:10:27] Ashley: You know, I think after you get more into this. You understand did you understood more of, um, the value that a practitioner who's been to the rigors can provide, you know, if you if you're good technical writer from like an engineering, I've had I've worked with plenty of engineers who are great at putting together technical document.
Fantastic. Like, you'll save your practitioner a lot of work, but a technical document is not a substitute for a specification because there is so much of a language, a, um, you play with so much language and [01:11:00] applications to get that breadth and things that you want. Um, and so, yeah, like, don't, don't go it alone.
So, even if you get rejected, I mean, play on the rejection here, like, you know, yeah. This, this kind of world is better meant to go, not go it alone, do it with somebody, because when you get rejected by another party, you know, it's not as bad.
[01:11:23] Marie: Well, I think, um, to add to the discussion that we had just had before, dependent claims are important because they're kind of your backup.
Um, And talking with examiners over the years, I think one examiner said once an examiner starts combining more than three pieces of art and your rejection, it becomes more of a challenge for them. So as you advance in prosecution and you get more and more of that. Um, you know, I, I had one time the examiner had six pieces of art and I literally kind of said, you know, really, [01:12:00] can we really, you know, you can try to find a hole in that, or at least try to find the weakest piece of art against whichever element and try to go after that.
So, it's kind of, you know, going down the path, getting them to have to dig more. And also, I think you get a good idea of where those dependent claims may take you, even if you get a one or two on the independent, then you can kind of say, You know what, if it's all of them to a 102, you know, you've got work to do, but many times your dependents may have taken two or three or maybe even four references to get over, and sometimes there can be a little nugget in there that you can go after.
So I try to make sure when I draft that I actually want those dependent claims, that they're not putting limits into the independent claim that I may not be, may not have that much, uh, Desire to [01:13:00] have, but I'm just putting it in there because it was some other feature the inventor's talked about. You know, I, I, I want those dependent claims, particularly in that 1st round to have some value because they can give me an idea of another path that you may be able to go down.
[01:13:14] Kristen: I agree. I, I, when I write a dependent claim, if it's one line, I, I tend to look at it about 10 times before I'm done because I'm like, am I sure that that's all I meant? Because it seems a little broad in a way that isn't going to help it. It will never be something I want to integrate into the. Uh, independent claim itself, and it will likely be obvious, so.
And
[01:13:40] Marie: on the flip side of that, if you, if you draft an extremely narrow set of dependent claims, where one depends on another, depends on another, and then the examiner allows the If dependency and you have a five page claim allowed, then you kind of sit there and go, [01:14:00] I really didn't want that. Well, if you didn't know why, you know, don't put it in.
If you don't, if you don't want to go that narrow, because that has, I've seen that happen and then you're sitting there with a loud subject matter that you don't even want. And you kind of have to tell the examiner this and they get a little confused.
[01:14:20] Dan: Yeah, totally. What do you mean you don't want, what do you mean you don't want an allowed claim?
[01:14:24] Marie: I
[01:14:24] Ty: didn't mean it.
[01:14:26] Marie: Well, I don't think this is what I really wanted, but why is it in there?
[01:14:31] Ashley: Thanks, but no thanks. That's where you get to reject the examiner. It's not, it's not you, it's me.
[01:14:41] Dan: Yeah. But
[01:14:45] Ashley: thanks, Dan. This is awesome. Oh, yeah.
[01:14:48] Dan: Well, thank you. I'm glad. No, I think it was a good discussion. This was a fat, you know, a lot of ground to cover here, but just trying to put the basics in a broader context, um, and yeah, really valuable [01:15:00] contributions. There's again, all sorts of, sorts of nuance to how this feeds the, what tactics you can take for those.
Um, uh, the, so A good, good review of what on the surface seems like a very fundamental aspect, but it's, it's, it's the meat of the business. It's good to review. Good to go through, uh, uh, right. The best prepare for the best or pair for the worst. So you can have the best patents that come out of this process.
So thank you for joining me today.
[01:15:35] Ashley: Thanks, Dan. Thanks, everybody. Thanks, everybody. Bye bye. Bye.
[01:15:41] Josh: All right. That's all for today, folks. Thanks for listening, and remember to check us out at aurorapatents. com for more great podcasts, blogs, and videos covering all things patent strategy. And if you're an agent or attorney and would like to be part of the discussion or an inventor with a topic you'd like to hear discussed, email us at podcast at aurorapatents.
com. Do remember that this [01:16:00] podcast does not constitute legal advice, and until next time, keep calm and patent on.
