Don’t give up!

OK, so you succeeded to open up your own and your colleagues minds. Together you developed a good idea that ended up in an invention, and then you also spend the time needed for preparing a patent application and finally it was filed. Congratulations! ….

One year later, when you almost forgot about the invention, and working full time with another project, a patent engineer sends you a bunch of papers (or nowadays, links to docs) including a search report from the patent office, the search report includes a lot of “X” and “Y” references. This is patent review buzzword meaning

Your invention is neither new nor inventive ☹!

Many people tend to give up here …. But it is now the “fun” starts!

First of all, the examiner is a human that have judged that your invention is neither new nor inventive, due to extensive search of prior art documents. But, maybe he/she has misinterpreted your invention? Maybe, the aim at the patent office is to make a negative decision in order to make the inventor think once again over what can be protected over prior art?

I will say, this is the way you should think;

The examiner is wrong!!

Then you need to read the prior art document (maybe with help of the patent engineer/attorney) and find arguments for that these documents might describe something different and in combination with the prior art documents will end up in something that is completely different compared to your invention. Then you together with the patent persons need to write an answer arguing that the examiner is wrong. In some cases, you might need to reduce the scope of the claims to overcome prior art. Then half a year later you get a new response/search report from the examiner, maybe still negative (then it starts all over again), some other times the report will be positive.

To obtain a granted patent is an iterative process that can take several years! So you need to have perseverance and never give up to early!

I used to say:

Never ever trust an office action, …. especially not the first one!