Bench & Bar May/June 2025

disclosed in a single reference. For example, if a single disclosure (“D1”) discloses each and every feature of an invention, then the invention is not novel. “Non-obvious” is generally appreciated to be different over what is known to the public as disclosed by multiple references in view of each other. For example, if multiple references (“D1” and “D2”) disclose each and every feature of an invention, then that invention is obvious. “Useful” can generally be demonstrated by showing how an innovation accomplishes something, e.g., the invention’s “use.” For example, if an inventor engineers a unique speck of dust that is subjectively appealing to the inventor, but objectively has no prac tical use, then that invention is not useful. “Enablement” may be demonstrated if a person having ordinary skill in the art (a “PHOSITA”) could review the disclosure in a patent and replicate the disclosed inven tion without undue experimentation. 13 For example, if an inventor contemplates an inter-stellar UFO, but cannot disclose the mechanisms such that a PHOSITA could build and use the invention, then it lacks enablement. “Patent eligible subject matter” is defined by many statutes, rules, and cases, and it is more efficient to discuss subject matter that is not eligible for patent protection than the greater range that is eligible for patent pro tection. Mathematical equations, methods of organizing human activity, and mental processes are examples of subject matter that are ineligible for patent protection. 14 As a practical example, software-related patent applications are notorious for being rejected on the basis of claiming steps which are arguably performable by a human mind ( e.g. , processing millions of computations) without doing significantly more and/or without having a technical benefit, e.g. , rendering the claim ineligible for encom passing a mental process. 15 As one might expect, these issues are frequently contested by patent prosecution attorneys and exam iners during the patent prosecution process. FILING A PATENT Filing an application for a patent may be done by a patent attorney or pro se by an

applicant. 16 Patent applications are dense legal documents requiring many hours of technical drawing, writing, researching, and citing. Thus, many people choose to hire a patent attorney with expertise in their preparation in order to prosecute patent applications. 17 Patent attorneys are uniquely qualified to prosecute patents. They must sit for and pass a rigorous exam - the United States Patent and Trademark Office (USPTO) Registration Examination (the “patent bar”). 18 Upon passing the “patent bar,” an attorney becomes federally registered with the USPTO and can practice patent matters before it. Notably, patent agents also exist, who have very similar qualifications as a patent attorney (such as passing the patent bar), but do not possess a state law license. Examination of a Filed Patent Application After filing an application, the USPTO will assign an examiner to review the application and look for deficiencies. 19 An examiner will do their best to ensure that an appli cation enables a PHOSITA to practice an invention. An examiner will also do their best to ensure that an application is related to patent-eligible subject matter. But per haps most importantly, an examiner will do their best to ensure that an application is, in fact, novel and non-obvious. Examiners serve other roles, but these duties sum up their primary function- to “serve as a judge on patentability with respect to inventions claimed in a patent application under con ditions for patentability set forth in Title 35 of the United States Code.” 20 During the Examination phase, a patent attorney (or agent, or pro se inventor) typ ically corresponds with an examiner to address alleged defects, and/or to accept an indication of allowable subject matter. Typically – though not always - an exam iner will have an initial rejection (aka, a “non-final rejection) of the originally-filed application. This rejection may indicate errors such as typos, illustrative defects, lack of enablement, and/or proximity of prior art. Prior art can be one or more publicly available documents that the examiner cites as disclosing the features claimed in the patent application that existed before the application’s filing date. This prior art would indicate a lack of novelty or lack of

non-obviousness relative to the pending patent application. An attorney is permit ted to reply to this rejection in an attempt to rectify alleged deficiencies and expedite prosecution. The examiner has wide discre tion to flag and/or suggest allowable subject matter at various stages of prosecution which could obviate the need for additional rejections and/or responses. If an examiner deems the reply to the non-final rejection to be insufficient for any reason ( e.g. , it did not rectify previ ously presented issues, it presents new and/or additional issues, etc.) the examiner may follow-up with a subsequent rejec tion known as a “final rejection.” Despite the nomenclature, an attorney or pro se applicant may reply in a similar fashion to the reply to a non-final rejection. Both non-final rejections and final rejections are referred to as “office actions.” Based on the reply to the final rejection, the examiner may provide an “advisory action” indicating that the application is allowed or indicating that additional pros ecution is necessary. 21 If the advisory action indicates that the application is allowed, that is typically the end of prosecution. Some post-allowance amendments may be entered to clear up clerical issues that might have occurred along the way. If the advisory action indicates that the application is not allowed, then it is typically a business deci sion for the applicant whether to abandon the application, or to pay additional fees for continued examination. The payment of additional fees allows the USPTO examiner to engage in further examinations of two more replies by the patent attorney or pro se applicant, and to provide for two more office actions to move the patent application toward allowance. 22 There are two primary outcomes from the examination phase – allowance or abandonment. 23 Abandonment occurs if an applicant, for various intentional or unintentional reasons, fails to appropriately reply to a notification from the USPTO. If aban donment occurs, the applicant does not ALLOWANCE AND ABANDONMENT

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