To be an effective advocate, a patent attorney must have a deep understanding of both patentability standards and the relevant technology of the patent application. property right enables the patent holder to effectively deter others from making, using or selling articles or using processes in competition with the patent holder. The scope of the claims in any patent is a function of both the prior art and the manner in which the claims are written to emphasise and focus on the new, useful and non-obvious features of the invention. Please describe the process involved in obtaining a utility patent. What are the key steps involved? The crucial first step toward obtaining a utility patent is for the inventor to prepare an invention disclosure. The patent attorney is responsible for preparing the patent application to meet the legal requirements of the United States Patent and Trademark Office (USPTO) and implement a suitable claim strategy, but the quality of a patent application is improved if the inventor or applicant provides a complete and detailed disclosure of the invention and its various embodiments. The use of drawings is strongly encouraged. As part of the patent application, the attorney will prepare a set of claims that vary in scope and serve as a series of patentability questions. After the patent application has been finalized to the satisfaction of both the applicant and the attorney, the application is filed with the USPTO. The USPTO will assign a serial number and filing date, then notify the applicant of any missing parts, such as an inventor’s declaration. After a period of several months, the USPTO will assign a patent examiner that will search for relevant prior art and provide the applicant with an office action describing any rejections made against the claims. The applicant must file a response addressing all of the rejections within a period of about three months. Next, the patent examiner will send out either a final office action or a notice of allowance, where the final office action may either maintain the earlier rejections or set out new rejections that may have been necessitated by the applicant’s claim amendments. The applicant has the option to appeal any final rejections or continue working with the patent examiner by filing a request for continued examination, but the process is intended to lead to a conclusion by the final office action or any response to the final office action. Why is it worthwhile to retain a patent attorney during this process? What obstacles can they help to overcome? An experienced patent attorney that focuses on patent preparation and prosecution will prepare the patent application with a view toward avoiding the many potential rejections that can be made against an application. For example, the patent application must include a written description that describes the invention with sufficient detail to enable a person having an ordinary level of skill in the art to make and use the invention without undue experimentation. A patent application with broad claims may require a broad description, including multiple embodiments. Furthermore, the claims themselves must convey a clear and definite meaning while being directed to patent eligible subject matter that is new, useful and nonobvious. Each of these requirements is the applicant’s responsibility and failure to meet any one of these requirements may prevent the patent application from ever resulting in an issued patent. It is critical to address these issues during preparation of the patent application because the applicant is prohibited from adding new matter to the patent application after filing. How does an effective utility patent attorney advocate for an invention’s patentability before the USPTO? To be an effective advocate, a patent attorney must have a deep understanding of both patentability standards and the relevant technology of the patent application. It is also necessary to determine whether a rejection of the claims is based upon a logical fallacy, an improper patentability standard, a failure 60 LAWYER MONTHLY APRIL 2023
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