Q10: Avoiding RCEs

A More Fundamental Shift

In my experience most RCEs are necessitated by the Examiner applying new prior art in a second Office action and making it final. The applicant not having seen the new art then needs to further amend the claims, but the Examiner will not permit the Applicant to do so after final. When I was an Examiner, I was taught to read and understand the specification before scoping out the field of search, and to search the ...more »

Submitted by (@vmdeluca)
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Q3: Interviews

Provide Simple Pre-Search Interview Process

Examiners often seem to have only cursory understanding of invention before initial search. Often only until interviewing at second office action do they say "ah ha". Allow for simple pre-search interview---no onerous requirements, no discussion about prior art on the record. Simply present and explain the invention, invite examiner questions and examiner can ask 112 issues regarding the claims before the initial search. ...more »

Submitted by (@waynesobon)
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