The Art of Persuasion: How to persuade IP examiners

Why is persuasion necessary? If you’re going to be an IP attorney, you must be able to persuade. There is no way around it. Whether you’re focused on IP litigation or prosecution, the skill of persuasion is critical. Here’s the problem. Persuasion involves people skills and a proper balance of listening and speaking. When it […]

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What a USPTO patent examiner really thinks

Thinking like a patent examiner We are privileged to have a former USPTO patent examiner, Lyman Smith, as Of Counsel patent attorney to our firm. The following insightful answers come from Lyman’s familiarity with the inner system of the US Patent Office. Keep in mind we are talking about utility nonprovisional patent applications, and not […]

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How does the USPTO get prior art?

How do USPTO patent examiners get prior art? When examining patent applications, USPTO examiners get relevant prior art through two primary means: the patent examiner searches the prior art; and relevant prior art is submitted for the examiner’s consideration. The active approach of the examiner searching prior art is straightforward and no different than what […]

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What is a Patent Examiner’s Amendment?

What is a Patent Examiner’s Amendment? I love Examiner’s Amendments. Not only is the patent examiner willing to allow a patent application, the examiner is taking the initiative to amend the application in order to get it allowed. Agreeing to an Examiner’s Amendment is more expeditious than filing your own amendment because you save the […]

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Why conduct patent examiner interviews?

What is a patent examiner interview? A simple truth is often overlooked in the back-and-forth written communications with the USPTO: patent examiners are human. An examiner interview is a conversation between your attorney and the USPTO examiner reviewing your application. While the interview might take place in person, the discussion typically occurs over the telephone or […]

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