Chemical and pharmaceutical organizations shield their investment in study and development and the future of the providers by securing patents on their inventions. Patents help you resist competition. Good results or failure of the company generally depends on the strength of the patent and the longer the term of the patent, the higher will be its value. A robust patent is 1 that defines your invention broadly and but at the very same time builds in fallback narrow invention.
The United States Patent and Trademark Office receives hundreds of thousands of patent applications each and every year. In reality, the Patent Office has lately proposed new patent rules to ease the Examiner workload. According to one proposed rule, if a patent application is rejected, to be in a position to present your case once more, the patent applicant will be restricted to filing 1 request for continued examination (or RCE). In light of the new rule, unless the patent applicant masters the complexities of patent law, the applicant could possibly end up obtaining a weak patent instead of a robust 1.
Think about you have filed a patent application where you have defined your invention broadly as properly as narrowly in ten succinct sentences in what are known as patent claims. These patent claims will be numbered 1 by means of 10. Generally claim 1 will represent the invention of the broadest scope, and the greater numbered claims represent fallback narrow inventions. In our hypothetical, claims 2 to 10 will refer back to claim 1. Therefore, claim 2 refers back to claim 1. Claim four refers back to claim three, which in turn refers back to claim 2. Claim 5 refers back to claim 1 or claim 4. In this example, say claim five refers back to claim 1. Preserve in mind that the more number of fallback claims you have, you have a improved chance of winning the lawsuit in the event your competitor challenges your patent.
Now picture that the Examiner rejects the patent, as it frequently occurs, stating that the invention is not new or is only a minor modification of what is identified already. You, as patent applicant, have a chance to respond to the Examiner. You present arguments stating why the invention is new and not apparent and why you should granted a patent. The Examiner rejects your argument. Now, to continue your effort to get a patent, you wish to present new arguments. To do so, you may well have to file an RCE (and the fee) along with the new arguments.
The Examiner takes it up once more. This time, the Examiner softens a small and says, in a non-final rejection, that invention of claims 4 to 10 would be allowable as a patent if you rewrite claim 4 with no a reference to claim 1, but continues to reject the broader invention of claims 1, two, and 3. You now have a choice of taking what the Examiner gave you, that is, claims four to 10 or alternatively, argue some much more. You decide on to argue. The Examiner finally rejected your application, repeating what he said prior to, that is, claim 4 onwards would be allowable if you rewrite it as indicated prior to. Now, the selections you have are incredibly limited. You can rewrite claim 4 as the Examiner indicated, as new claim 1, and acquire a patent with new claim 1. Even so, you will not be able to get a patent with claims 5 to 10.
The Examiner would refuse to grant claim 5 to 10 since he will say that claim 5 now has been changed in its scope even although you did not change the wording of the claim. The Examiner will argue that original claim 5 referred back to original claim 1. Now, claim 5 refers back to new claim 1, which is of a distinctive scope. The Examiner would indicate that, as the scope of the claim has changed, he would need to have to carry out further search and examination on claims 5 to 10. He would say that the patent law would not permit him to do so given that the rejection has been produced final already. The only way to get the Examiner moving on this would be if you could file an RCE. But, you have already used up your RCE alternative. You cannot file a further RCE now, and as a result, you cannot get claims 5-10. You will get a patent with just 1 claim. If an infringer challenges your patent, and proves that your only claim is invalid, your whole patent would be thrown out.
If you had rewritten claim four (as new claim 1) when responding to the non-final rejection, rather than when responding to the final rejection as you did, patent law would have allowed the Examiner to carry out further search on claims five to 10, and the chances of receiving those claims would have been favorable. If you had fallback position of claims five to 10 also, you would have a higher opportunity of winning the case.
Copyright 2006
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