4

I heard you can request the examiner formulate one claim for you. When is this a good idea?

If the goal of a patent is to merely document the existence of some novelty without trying to claim the world while you are at it, can an examiner's claim speed the process along?

If you never intend to prosecute your patent can an examiner's claim make granting more likely?

I assume if the examiner writes that one claim for you it is pretty darn narrow right?

  • Examiners spend all day reading claims, writing them is a different skill, especially if you are looking out for the inventors rights. I do not think they need to put your rights ahead of their interests. Yes it will be narrow and can have any number of fatal flaws. If they do not understand your invention they may not see anything patentable in your appellation or may write a claim that has nothing to do with what you think the invention really is about. It will speed the process. – George White Jul 10 '14 at 6:07
1

If the goal of a patent is to merely document the existence of some novelty without trying to claim the world while you are at it, can an examiner's claim speed the process along?

If the patent application has published, then the goal has already been achieved. Next time, save thousands of dollars by using a defensive publication service rather than filing a patent application.

0

You are right that Examiner can write claim but as applicant you can not request them for same.

as per MPEP 707.07(j) State When Claims Are Allowable

When, during the examination of a pro se application it becomes apparent to the examiner that there is patentable subject matter disclosed in the application, the examiner should draft one or more claims for the applicant and indicate in his or her action that such claims would be allowed if incorporated in the application by amendment.

In general in case examiner provides opinion like this applicant or inventor should have call or oral proceeding with examiner to understand his/her view. If applicant feels that claims are sufficient it can be filed as amended.

Your Answer

By clicking “Post Your Answer”, you agree to our terms of service, privacy policy and cookie policy

Not the answer you're looking for? Browse other questions tagged or ask your own question.