EB: Patent Prosecution Process (Part II): Notes Friday, April 8th
Examination of Applications
- Examiner searches the prior art
- Can send back to the inventor for more information
- Determine if invention is "useful, novel, nonobvious, and...clearly described in the specification."
- Burden on the examiner: must "clearly articulate" reasoning for rejection, giving the inventor the ability to respond to the accusations
New Matter: Section 132 "No amendment shall introduce new matter into the disclosure of the invention." Cannot expand your claims when you reissue, you can only narrow.
Final Rejection: You usually only get one chance to amend your application, after that it is rejected for good. Usually only get 1-6 months to respond (almost always have 3 months).