to address every limitation of the claims, an unreasonably broad or improper interpretation of the claims, an incorrect understanding of the prior art, and similar errors. These types of improper rejections should be rebutted with legal arguments supported by legal citations and/or technical explanations supported by citations to the prior art or the applicant’s specification and drawings. If a claim rejection is determined to be valid, then it may be necessary to submit claim amendments closely based on the applicant’s specification and determined to narrowly distinguish the claims from the prior art. Furthermore, if the patent examiner has made a clear error and will not withdraw a rejection, then it may be a successful strategy to file an appeal. Patent examination practice and procedure is a very specialised endeavour and there is no substitute for knowledge, experience and ability. What specialised skills and professional experience should be sought when looking for an ideal utility patent attorney? A person may not represent an applicant for patent before the USPTO unless they are in good standing on the USPTO’s register of patent practitioners. In addition to this requirement, you should look for a patent attorney whose practice focuses on patent preparation and prosecution and who communicates with you in a clear and prompt manner. Applicants with little or no experience with patent preparation and prosecution will heavily rely upon the patent attorney’s ability to communicate the procedures, objectives and strategies that must be understood to manage the prosecution of their patent application. A patent attorney should also study your invention disclosure and quickly exhibit a solid understanding of your invention. The patent application is a technical document as much as it is a legal document. So, the patent attorney must have a solid understanding of the invention and an ability to prepare a comprehensive and clear written description of the invention. For many inventions, the patent application will also require drawings that illustrate the claimed aspects of one or more embodiments of the invention. Certain inventions may benefit from additional case-specific efforts. In one example, a chemical process or formulation may benefit from numerous examples or experimental results to provide enablement for embodiments across a broad range of component concentrations or show criticality of a specific ingredient, concentration or process condition. In another example, a software-related invention may benefit from a review of recent patent ineligibility decisions to identify claim limitations and specification support that will overcome abstract idea rejections. Your patent attorney should be able to identify these situations and request additional information that may improve the likelihood that you will be granted a patent for your invention. EXPERT INSIGHT 61 About Jeff Streets Jeff Streets has been a registered US Patent Attorney for over 29 years, with a focus on US patent application preparation and prosecution. Jeff has handled patent prosecution for large and small companies and independent inventors, and understands the different roles necessary to best serve these distinct client types. In addition to 29 years of experience in patent preparation and prosecution, Jeff has earned a Bachelor of Science in Chemical Engineering, a Masters of Business Administration, and a law degree. About Streets Lawfirm, PC Streets Lawfirm, PC provides patent application preparation and prosecution services covering a wide range of technologies, including computer software, mobile apps, computer systems, mechanical devices, chemical and electrochemical processes, chemical formulations and compositions, and oil field tools and processes. Contact Jeff Streets Streets Lawfirm, PC 20319 Corbin Creek Drive, Cypress, TX 77433, USA Tel: +1 281-732-1945 E: jstreets@streetsiplaw.com www.streetsiplaw.com
RkJQdWJsaXNoZXIy Mjk3Mzkz