Patent It Yourself - PDF Archive

346 | Patent it YOURSELF
to get a difficult case allowed, since communication is greatly
enhanced when you and the examiner can discuss your
differences and reach an understanding through the give
and take and multiple feedback loops an interview permits.
Also, it’s harder to say “no” directly to a person face-to-face.
Lastly, an interview provides an excellent opportunity to
bring in and demonstrate a working prototype or sample of
the invention to the examiner; this is usually an excellent persuader.
However, I recommend that you try to avoid calling
or interviewing any examiner on Fridays, since, like most of
us, they’re likely to be less attentive then. An excellent guide
for negotiating with examiners is presented by Examining
Group Director A.L. Smith at page 168 of the 1990 February
Journal of the Patent and Trademark Office Society. (This is
available in most academic and business libraries as well as in
Patent Depository libraries.)
I cannot overstate the value of an interview. One pro se
applicant that I know (Alex) had a very difficult time getting
his case allowed. On my suggestion he traveled to the PTO
to have an interview with his examiner. To his dismay Alex
found from discussing the case that the examiner had likely
never read his application and definitely did not understand
the invention. Fortunately he was able to explain the
invention on the spot and, with some claim adjustments,
managed to get the case allowed. By the way, one site
(www.USPTOExaminers.com), allows attorneys and
applicants to post reviews of examiners anonymously.
Sometimes your examiner will call you, offering to allow
the application if some changes are made in the application.
If the changes are minor you can agree to them on the spot.
But if the changes are substantive and involve the claims, I
suggest you tell the examiner you would like to study them
for a day or two and will call back. You should study the
proposed changes carefully. If they would unduly narrow
the claims, try to formulate and suggest some less restrictive
changes which are still allowable.
17. Working or Commercial Model
If you have a working or commercial model of your invention,
it’s usually desirable to show or send this (or literature on it)
to your examiner. This may make the examiner a believer
in your invention, its operability, its advantages, and its
commercial success. If your invention is out on the market
and has had commercial success, you should submit a
Declaration Under Rule 132 with exhibits attesting to
such success and explaining why such success is a result of
the novel features of your invention. The Supreme Court
has specifically stated that the PTO must consider such
commercial success when deciding on patentability—see
MPEP § 1504.03.
18. No New Matter Can Be Added
to Your Application
Virtually every inventor I’ve ever dealt with has asked me,
at one time or another, about adding a new development or
embodiment of their invention to their pending application.
I must always answer in the negative. This is because once
your application is filed, the statute, 35 USC § 132, prohibits
you from adding any “new matter” to it. (New matter consists
of any technical information, including dimensions, materials,
parts, values, arrangements, connections, methods, etc.,
that was not present in your application as originally filed.)
This prohibition makes sense since, if patent applicants were
permitted to add continuing improvements and changes
to their applications, the date of invention, and what was
invented when, would be too difficult to determine.
Because of this widespread misconception, and because of
the frequency with which PTO examiners must object when
“pro se” (no attorney) applicants add new matter, I made this
prohibition the subject of Inventor’s Commandment 26, at
the beginning of this chapter.
If you do want to add any new developments to your
application, consider a special type of supplementary application
(termed a “continuation-in-part application” or CIP
and covered in Chapter 14) or, if your improvement is really
significant, an independent, subsequent patent application.
New matter should be distinguished from prior art that
may be discovered after an application has been filed. You
are obligated to inform the PTO about any newly discovered,
relevant prior art. (See Section 6, above.) Such prior art doesn’t
form part of your specification, nor does it affect the nature
of your invention. Rather, it provides the PTO with more
information by which to judge your invention for patentability.
Also note that if you submit new claims that are broader,
narrower, or different, the PTO does not consider them new
matter, unless the new claims contain new information that
was not originally present in the application.
19. Official Dates Are When the PTO
Receives Your Submission
Every paper that you send to or receive from the PTO has
an official date. This is the date on which it was mailed from
or received by the PTO. You should put your actual date of
mailing on anything you send to the PTO, but the date of the
PTO’s “Received” stamp on your paper will be the “official”
date of the paper. If you send in your application by Express
Mail with an EM Certification (see Chapter 10), the PTO will
stamp it as of the date you express mailed it, even though
they receive it one to three days later. This is because, under
PTO Rule 10, they consider your local post office their agent
to receive your correspondence, provided you use EM.