What do you do if your intellectual property patents application are refused or objected to or has received an adverse report from the Patent Office? Does it mean the end of your patent application? The patent applicant must know what happens at the Patent Office and what to do upon receiving the examination report.
Examiner’s duties
In Patent Offices that handle examination of the application before grant, the Examiner has to ensure that the application meets with the legal requirements as laid out in the Patents Act of that country (some countries, e.g., Singapore, do not conduct substantive examination, but leave it to the applicant to decide on the scope of claims). In order to protect intellectual property Malaysia as well as many other countries do a detailed and thorough examination. The Patent Examiner has to ensure that:
i) the application meets with the formality requirements, e.g., name and address of applicant(s), name and address of inventor(s), patent description is legible, drawings (if any) are clear enough for reproduction and electronic storage, etc.
ii) the application meets with the time basic requirements of patentability, namely the features claimed are (a) novel, (b) inventive, (c) industrially applicable, (d) not against public order and (e) within statutorily allowable subject matter (discoveries, software, and business methods, for example, are not patentable).
RESPONSE
Formal Requirements
Generally if objections are raised on formalities alone, the applicant can easily correct the shortcomings by filing clearer print copies, better drawings, filing all the necessary forms, etc.
Subject Matter Requirements
When the Examiner raises subject matter objections, the applicant has several choices:
(i) he may agree with the opinions/findings of the examiner and comply with the Examiner’s requirements;
(ii) he may agree with some findings and not agree with others, or totally not agree with the Examiner’s findings.
In the latter case, the applicant can submit arguments (based on law and on facts) as to why he does not agree with the Examiner’s findings. The applicant can also amend the claims to overcome the objections. In practice, the applicant would submit arguments against some of Examiner’s findings, and at the same time amend some of the claims.
ROUNDS OF NEGOTIATION
The Examiner, upon receiving the applicant’s response, may totally agree with the response, or he may agree with some and not agree with others. In the latter situation, a second adverse examination report may be issued. The applicant then has to consider the second report and file an appropriate response.
In practice, from our years of experience dealing with intellectual property patents protection in many countries, it is quite normal to have two or three or even more “rounds” of negotiations between the Examiner and the applicant before a patent is accepted for grant. At times a personal interview between the applicant / patent agent and the examiner may help to clear the outstanding issues. As the filing of the response must take into account the law and the technology involved, it is important that the patent agent handling the prosecution be familiar with the legal and technical issues in order to obtain a strong patent. Further, there are time limits by which response should be filed. The patent agent should not act as a postman, forwarding correspondence between the examiner and the applicant/inventors without giving his professional consideration to the issues raised.
Obtaining intellectual property patents in a very competitive area of technology has to be done strategically. A very narrowly claimed patent may be easier to obtain, but it would not be a valuable patent. Other parties can easily avoid infringement by making slight changes to their technology. On the other hand obtaining a broadly claimed patent may be difficult but the patent would claim a broader scope of technology. Yet again, it may claim subject matter which is in public domain and therefore the patent claim may be invalid. It is the patent agent’s responsibility to obtain a patent that is not too overly narrow or broad – a difficult balancing act. A patent that is too narrow or broad may just end up as a “paper patent” with little commercial value.
Filing a patent application and obtaining a patent does not consist of the mere act of filing and receiving the Certificate of Grant, just like when applying for road tax. As the patent is a valuable property, care must be taken in handling the patent application carefully – right from drafting the patent description up to prosecution and grant of the patent. So if you receive an adverse report from the patent office do not despair, there is scope for obtaining a patent by intelligently handling the objections.
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