What Does It Take to Get a Patent? Perseverance Is a Key Ingredient
What does it take to get a patent issued? One ingredient that clients often struggle with is perseverance. The reality of getting an issued patent is that it is often a struggle. For those caught in this trap — you should get some comfort from the fact that many of the most innovative concepts have often taken years to get out of the patent office.
Here is what happens in almost all cases. A patent examiner’s job is to shoot holes through any invention that comes across their desk. To do this, they primarily make prior art arguments with one or both of these arguments:
1. The invention is anticipated by somebody else, which means that every element of the invention is disclosed in another publication, such as a patent, journal article, or on a website.
2. The invention would be obvious to a person with skill in the art to start with reference ‘a’ and combine this with reference ‘b’ to obtain every element of the invention.
The second objection, the obviousness rejection, can be more difficult to overcome because references are being combined. So divining in advance what an examiner will argue is more difficult. The key point is that patent attorneys like me, that do patent prosecution everyday, see these things all the time — and these arguments don't fluster us. We almost always know how to respond to them. But often times, less experienced inventors see these arguments by an examiner and are ready to throw in the towel prematurely.
When an inventor comes to me before submitting their invention to a patent examiner, I always recommend a prior art search, to get a good idea of the patents, journal articles, and websites that are relevant to the invention and that could be used in a prior art rejection by a patent examiner. Because these are the same things the examiner will look at, looking at them in advance helps us to know where the minefields and potholes are so we can drive around them during the patent drafting stage. This is beneficial during patent prosecution when the examiner gives us their rejections, because in giving us counter-arguments we know how to fire back and get the patent out the door.
So when inventors get prior art rejections, this is not the time to give up! By anticipating the issues in advance (from our own prior art search), and high-quality drafting of the specification and claims, we have a great success rate in overcoming these obstacles.
This is why it's important for inventors to discuss their concerns with an experienced patent lawyer to address these issues. There are patent strategies and techniques we use, such as patent examiner interviews, prior art searches (that we do ourselves), and high-quality patent drafting, to help our clients overcome the rejections and avoid many of the problems before they happen. Give us a call and let us help you get your patent issued.
Andrew H. Berks