Patent Law

Illogical first Office Actions?

By Lawrence B. Ebert, Esq.

Given that examiners weave together some rather illogical and almost impossible to believe rejections, particularly in a first office action, the patent bar is stuck disclosing mountains of information that is no doubt objectively not relevant or risk the Federal Circuit ruling that any patent obtained is unenforceable for inequitable conduct.

The Examiner, who on average has only about 18 hours to review an application from start-to-finish, doesn't have a lot of time to identify the closest prior art. The applicant may initially have a better grasp of the context of the invention, and certainly can flesh out that context, not only in a 1449 form but also in "background of the invention." It's not clear that "mountains of information" is the issue.

Full post as published by IPBiz on December 13, 2008 (boomark / email).