EB: Patent Prosecution Process (Part II): Notes Friday, April 8th

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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).