A Legal Guide To TECHNOLOGY TRANSACTIONS A COVID-19 Update…

included in the patent application accurately capture the invention described in the patent application, and at an appropriate scope that does not encompass “prior art”. THE EXAMINER’S EXPERTISE Patent Examiners all possess some type of technical training, and a particular category of inventions is assigned to each examiner. Some categories are very narrow, and one Examiner, for example, may only handle applications based on the manufacture of electronic circuit boards. Such an Examiner will thus acquire a great deal of expertise on the subject of such circuit boards. However, some Examiners are assigned a broad category of inventions to examine. This is simply due to the fact that the inventions can only be divided up into so many categories. Hence, it is very likely that such an Examiner will be dealing at times with inventions with which he or she is not very familiar. Thus, part of the application process may necessarily include educating the Examiner as to the particular problems or advantages addressed by the invention to which the application relates.

OPTIONS AVAILABLE AFTER RECEIVING A FINAL REJECTION

Once an Examiner issues a final Office Action, patent applicants have limited ability to amend the claims of that application to distinguish those claims from the references cited by the Examiner. A number of responsive options are available to the patent applicant, depending upon that applicant’s view of the patentability of the pending claims that stand rejected by the Examiner.

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