You wouldn't believe how difficult it is without specification support to find the point of novelty in a broad complex art.
To the contrary, I would believe it. In fact, I know first hand how hard it is to perform a comprehensive patent search. I was a patent examiner for many years before I decided to become a patent attorney. One question that patentatt's posts bring up that is worth discussion is, "Is it the duty of a U.S. patent examiner to perform a comprehensive
…my statements were pertaining to the "time" that search takes. The more helpful the applicant is, the faster the examiner can find pertinent art. The art is out there regardless of you telling us a point of novelty or not...you are merely helping us find it on search #1 instead of search #4.
Sure, the search takes time. But that is (or is in theory) why applicants pay the USPTO search fees. And there is a lot more at stake then you might realize if an applicant “helps” an examiner find pertinent art. Indeed, some of the many questions that are raised are:
1. If the applicant “helps” the examiner identify art, why wasn’t that art submitted in an IDS in the first place? (goes to a finding of inequitable conduct)
2. If the applicant guides the examiner’s search, has he/she tainted the examiner’s objective inquiry into the patentability of the claims? (could undercut enforceability, go to a finding of inequitable conduct, etc.)
3. What if the applicant makes a mistake and identifies the “wrong” point of novelty to the examiner?
4. What if the applicant doesn’t know the point of novelty? (Happens more often then you might think)
5. if an applicant's representative identifies a point of novelty, but the claims are broader than that point of novelty, does a U.S. examiner have a duty, as a steward and representative of the U.S. puiblic, to ensure that the narrower representation made by the applicant's representive shows up in the record? (I would argue that an examiner does have such a duty, which would eliminate "off the record" discussions entirely)
Even if we don't find it on search #4, the patent is virtually worthless (or expensive to uphold) if the art is out there. Further, if the patent is worth anything, you can bet the public will find art and send it in for re-exam.
Patents are expensive to enforce, regardless of whether an examiner does a good job or not. And of course, it is generally in the applicant’s interest to obtain patent claims that are valid and enforceable. But as my prior comments indicate, there is little benefit in the applicant assisting the examiner with his search, or helping the examiner come to a conclusion regarding patentability. And you might be surprised to learn that a patent is not worthless, even though it might be difficult to enforce or invalid.
Therefore, going off the record to explain the novelty is completely acceptable, especially if applicant uses terms like "one novel example may be"...that way you aren't limiting yourself to one scope.
That might be one method of moving forward, but as noted in my prior post I would not do that unless I was in the examiner’s office, and everyone in the room agreed that certain discussions would be “off the record” AND the examiner agreed to let me edit the interview summary before it issued into the file wrapper. And frankly, having to go through that process just stinks. Literally. It smacks of clandestine and illicit behavior. . . . yet another reason why practitioner’s should not help an examiner do his/her job.
FWIW, there is a specific program set up if applicant’s want to accept the risks attendant with what you are suggesting, namely the Patent Prosecution Highway program. But last I heard, that program was little used. . . . and for good reason.