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[Jonathan]

Hello - I have a client who want's to submit a prototype of his simple invention to the examiner and while I know such a thing isn't really possible, I can't find the MPEP cite to further back me up. I thought there was a section in the MPEP about this but now I'm not sure.

Regardless if there is something in the MPEP about this, I'm guessing trying to obtain a pre or post exam interview is the way to go - to show the invention to the Examiner, if it comes to that.

Thanks!

-Jonathan

[klaviernista]

Hello - I have a client who want's to submit a prototype of his simple invention to the examiner and while I know such a thing isn't really possible, I can't find the MPEP cite to further back me up. I thought there was a section in the MPEP about this but now I'm not sure.

Regardless if there is something in the MPEP about this, I'm guessing trying to obtain a pre or post exam interview is the way to go - to show the invention to the Examiner, if it comes to that.

Thanks!

-Jonathan

I know for a fact that a demo of an invention can be done via an in-person interview.  Back when I was an examiner, I used to examine cases directed to glazings for refrigerator doors (e.g., the ones you see in the frozen food section at the supermarket).  On several occasions, the inventors (who were French) accompanied the attorney of record during an interview and brought samples of the glazing with them to show me.

As for submitting a model or sample of the invention, see MPEP 608.03 et  seq. and 37 C.F.R. 1.91 (copied below):

1.91 Models or exhibits not generally admitted as part of application or patent.


(a)   A model or exhibit will not be admitted as part of the record of an application unless it:

(1)   Substantially conforms to the requirements of §1.52 or §1.84;

(2)   Is specifically required by the Office; or

(3)   Is filed with a petition under this section including:

(i)   The fee set forth in §1.17(h); and

(ii)   An explanation of why entry of the model or exhibit in the file record is necessary to demonstrate patentability.

"

[Jonathan]

OH!

I knew there was something in the MPEP on this.. I stopped searching when 'prototype' didn't come up with what I expected to be there..

Thanks!

[JustAnotherExaminer]

Some examiners get random inventions fedex'ed to them all the time.

Not me.   

[JimIvey]

FWIW, I've given online demos of inventions during an interview. 

I don't rely on them much.  The language of the claims ought to be sufficient to distinguish cited art in and of themselves.  However, I've had examiners ask questions that suggest they don't follow the claim language.  Sometimes, they don't follow the disclosure in the spec. 

Of course, not following the language in the spec could be a sign of 112 problems.  But, I get the sense that, perhaps due to the second-class status of computer-implemented inventions, the examiners in those groups aren't always of ordinary skill in those arts.

When I've given demos during interviews, it seems to at least give the examiner a good sense of what the whole thing is about.  It's led to better examination, in my opinion.

I've never had to deal with any of the rules for models or exhibits.  I don't really bring any embodiment of the invention into the interview.

Sorry you're not getting cool gadgets, JAE.  I've done some work for EA and recently hinted that my daughter and I love playing Halo (on the XBOX, just to make sure they knew which platform) and that we'd love to compare EA's leader in that genre.  So far, no joy....     Maybe I offended them with the Halo reference.  I thought I was clear that my bro-in-law gave it to me.

Regards.