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[Digmen1]

Hi Guys

I have a patent application under examination.

The examiner has ruled that our claims may have been anticipated.

So I need to narrow the claims.

It is a utility patent for a useful item.

Do I narrow the claim in the first sentence ?

[BobRoberts]

Hi Digmen1,

"The examiner has ruled that our claims may have been anticipated.

So I need to narrow the claims."

It is a utility patent for a useful item.

Do I narrow the claim in the first sentence ?"

This will sound harsh, but it is not meant as such.  Get a qualified patent attorney (or agent) to assist you.  Responding to an office action in an improper way could greatly curtail the scope of any patent that may issue from your patent application.

Just because a patent examiner says that your claims may be anticipated doesn't mean that they are.  Patent Examiners are often wrong with their assessment (usually not because they don't know what they are doing, but rather because they are offten pressed for time to the extent that they do not adequately understand various parts of your application and claims, and/or the art that they are citing against you. 

Case in point:  I have just received a rejection of my claims as not meeting Sec. 112, because a claim element is not described in the written description of the application.  The Examiner said that I failed to describe (not even 'adequately describe', but describe at all) the claim element.    Well, looking at the written description, I first gave an exemplary and currently in existence off-the-shelf part, manufacturer and part number that could be utilized (for a common part that one skilled in the art woud know about).  I called the part by its commonly accepted name, again that one skilled in the art would know.  And I devoted one-half a page describing the part including specifics about its components, the major structure, etc so that you could pretty much recreate the part (and thus claim element) from verbage alone, without the drawing that I provided in the application.  And still the examiner said that I failed to describe the part...

So, just because an examiner says it's so, don't believe it.  At times, examiners are correct about their interpretation of your application, and about the cited art.  However, not all the time (or in my experience, even half the time).  37 C.F.R. (Code of Federal Regulations) descfribes how to handle a Patent application before the PAtent and Trademark  Office, focusing on at least 37 CFR 1 - 37 CFR 1.378 (1.121 describes making amendments) (you should be intimately be familiar with at least sec. 1- 1.146), as well as the Manual of Patent Examining Procedure (MPEP) Chapters 700 and 2100.  Not just by reading, but how to apply it).  The problem in determining whether the examiner is correct is not always in identifying the proper section of the MPEP or CFR that applies, but in interpreting the legal standard that the Examiner should meet (and similarly that your application should meet) for patentability.  That could take years of experience to really catch on to (at least until the Courts step in and change it)...

Good luck.

Not to be construed as legal advice...

[Wiscagent]

Digmen1 -

If this application was filed by the inventors, without the help of a patent attorney or patent agent, then it is a "pro se" application.  Bob Roberts is correct, you're best off seeking the help of a patent attorney or agent.

A lower cost alternative is to consult with the examiner; part of the examiner's job it to help pro se applicants.  Give the examiner a call, see what happens.  You can always go ahead and hire an patent attorney or agent if the examiner is not helpful.

[BobRoberts]

"A lower cost alternative is to consult with the examiner; part of the examiner's job it to help pro se applicants.  Give the examiner a call, see what happens.  You can always go ahead and hire an patent attorney or agent if the examiner is not helpful."

Though this is always an option, isn't this a lot like letting the fox guard the chicken house?  The examiner's position is in effect opposed to that of the applicants.  I would never think that a pro se applicant (assuming little experience with patent procedure- "little experience" being less than 1 year of patent prosecution experience) with the examiner's help would get close to the scope of claims that an experienced patent practioner may get (assuming, of course, that the invention is new and non-obvious, enabled, and properly described including best mode).  Simply, the pro se applicant would have no basis or experience in overcoming the "unreasonable" objections/rejections of the examiner.  Just my two cents, and always open to hearing others experiences in these matters.

 

[Wiscagent]

Bob, I generally agree with you.  But keep in mind that we don't know the applicant's financial situation.  Many pro se applicants are working on a shoe string, and simply do not have the funds to hire a patent practitioner.

In concept, but perhaps not in reality, the interaction of the examiner with the applicant is not adversarial.  Many examiners will help the pro se applicant get some, but probably not the best, claims granted.

So for the applicant, if the options are reduced to (a) be frustrated, but do nothing productive and (b) make a phone call to the Patent Office and perhaps get some limited claims granted; then (b) is probably the better option.  And hopefully the applicant can afford the issue fees.

As for asserting the patent ... well, that's a different problem.

[bleedingpen]

Examiners are required () to file an examiner's amendment to recite patentable subject matter for a pro se application, provided patentable subject matter exists. 

But don't dare take the Examiner up on it.  I once examined a patent file history that was prosecuted pro se with the help of an examiner.  This was for a therapeutic fabric garment.  The Examiner amended to consisting of language and allowed the app to pass.  Yikes!  We easily side-stepped infringement and likely millions in damages. 

[JimIvey]

So I need to narrow the claims.

Well, you do only if the examiner is right.  Is the examiner right?  They're often wrong -- more accurately, overly aggressive in applying the law to reject claims.

Do not, under any circumstances, accept the examiner's word as the proper result.  Use your own judgment.  If you don't have your own judgment to use, then you have to decide how important your rights are to you and whether to consult a professional.  I believe that has already been suggested to you.

Just realize that examiners are not hired to be helpful to applicants as much as they're hired to protect the US public against excessive property rights claims of applicants like you.  They're not on your side, and properly so (in my opinion).

Patents are powerful and valuable property rights and are designed to not be easy to get.  Irregardless of how you might think it ought to be, that's how it is.

Regards.

[Digmen1]

Hi Guys

Thanks for all your replies.

Firstly we did use a patent lawyer for our patent application.

But we have since terminated their services, as they continually over charged us.

Here in New Zealand we have a thing called a Provisional Patent Application which we were told would give us an extra years grace to finalise our invention. We were quoted $2,500 for this, but the final bill came in at $3,500 and we paid it without query (dur -wrong !)

Then they filed our final patent application which then only involved writing the claims and a little  formatting. We were quoted $3,500 and a $2,000 deposit for this ! We said we understood it should be much less, so they said it would probably only be $2000, we accepted verbally (dur - wrong) but they still demanded the $2,000 deposit which they said would more than cover it. We paid this.

Our patent application was rejected by the examiner (see above). Then their final invoice came in at $3,500.

We spent a whole year disputing this, and finally got them to write the excess off. But now we have to complete the application ourselves. And yes we have run out of money.

So we are trying to reword our claims to be less broad (what is the opposite of broad  - in a patent sense ?).

We have spoken to our patent examiner, who is quite approachable, but he seems to e saying that he should not really help us too much with our application.

Would any of you be prepared to help us with our claims introduction sentence if we showed you our inventions web site ?

Kind Regards

Digby

[MYK]

First off, did you file your application with the USPTO, or with NZ's patent office?  The advice you're being given (particularly BobRoberts' citing of the CFRs, but also the "required to help pro se applicants" stuff) is mostly about dealing with the USPTO, because that's where most of us live.  I don't think I've ever seen a NZ patent attorney post here (one Aussie and a few people in Europe, but no Kiwis), and I have no idea whether other PTOs, including the NZ PTO, require their examiners to assist pro se applicants.

What you're asking for is, in effect, for someone to take on the liability for prosecuting your application (and presumably without any compensation for it, since you note that you've run out of money).  Given the legal malpractice risks (i.e., the risk that you might sue everyone in sight, since things have already started to go wrong), well, personally, I wouldn't want to take on that risk.

Not to mention that you seem to be taking it for granted that you just need to narrow your claims in some way -- but to decide that, someone doesn't just have to look at your website, they have to read all of the references the examiner cited, as well as the examiner's argument, and analyze the references and the argument to see if they're valid.

"Should" you narrow your claims?  That depends -- can you overcome the rejection in some other way?  Can you look at the references that the examiner has cited and spot any ways in which those references don't apply, or can't be used together?  If there's only one reference, are any elements of your claimed invention missing in the reference?  For that matter, are the references even applicable -- did the examiner cite references that were filed after your provisional?  Sometimes they screw up and look at the date of the nonprovisional instead.

"Where" to narrow your claims?  Did the examiner reject all of your claims, or just the first?  Can you combine some dependent claims into the first so that the combination doesn't exist in any of the references?

What you are looking to do is to mention in your (independent) claim(s) ONLY the "point of novelty".  The less you put in (while still claiming that point of novelty), the better.  Then use dependent claims to get as much breadth and depth as possible.

Hope this general overview is of some help.  Perhaps you can find a new attorney who will handle the patent work in exchange for whatever he can make by suing your former patent attorneys.    (Probably won't work, but you never know!)

[JimIvey]

MYK has answered your questions (I think).  I'll just emphasize two things.

So we are trying to reword our claims to be less broad (what is the opposite of broad  - in a patent sense ?).

"Narrow."

Would any of you be prepared to help us with our claims introduction sentence if we showed you our inventions web site ?

Patent laws (like most laws) are specific to the governing body that created those laws.  So, you'll need someone licensed to practice in the jurisdiction of your patent application(s).  I'm in the US, so I can only help with US applications, not with NZ applications.  Though most practitioners work with firms/practitioners in other jurisdictions.

Regards.