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Episode 24 of the “Law & Business” Podcast features Wil Jacques, the patent agent of Verna Law, P.C.

We discuss the patent application in three thoughts.

Wil Jacques

Wil Jacques, Patent Agent

After filing the patent application, there is an office action (rejection from the United States Patent and Trademark Office).

  1. First office action: The job of the patent examiner is to determine whether or not a patent application complies with the legal requirements for patentability. In particular, the examiner is to evaluate whether the claims in a patent application are enabled by the application’s specification, and whether the claims particularly point out and distinctly claim the invention. In addition, the examiner will conduct a search of United States patents and published applications, foreign patent documents, and available literature, to see if the claimed invention is new and nonobvious.
  2. Applicant’s amendment and response:  In responding to the first office action, the applicant’s patent attorney or agent will draft a response document that points out perceived errors in the office action. Frequently, this response document will include an amendment to the claims in order to clarify the invention and, in some cases, to narrow the claims so as to overcome the prior art cited in the office action. The response will also contain arguments as to how the pending claims are patentable in spite of the prior art references cited or the objections made.
  3. Final Rejection:  In some cases, the patent office is not persuaded by the applicant’s response. Instead, the patent examiner either continues to reject the application on the same grounds identified in the first office action, or develops new reasons why the application still does not meet the legal requirements for patentability. The applicant is notified of this continued rejection through a second office action. In most cases, this second office action will be made “final.” When an office action is final, the applicant’s response is then limited.