Intellectual Property Information

Contact from the Examiner

Recently, we often receive contact from the examiner for pending applications.

The contact is with respect to the response to the Office Action from the examiner.

More concretely, the following is suggested by the examiner:: A part of the rejection reason is not overcome by the amendment;; The application would be patentable when the rest of the rejection reason is overcome by further amendment;; An unofficial amendment can be submitted to confirm whether the rejection reason is overcome prior to giving the chance of filing amendment.

When the Examiner confirms that the rejection reason is overcome, then a final Office Action is mailed to give an opprotunity for filing the amendment officially.

In general, if a part of the rejection reason is not overcome by the amendment or response to the Office Action, the Examiner renders a decision of final rejection.

After the decision of final rejection is rendered, it is required to demand an appeal trial against the Examiner's final rejection to amend the application.

Demanding the appeal trial against the Examiner's decision of rejection becomes a large burden to the demandant of the trial and becomes a factor to delay establishment of a patent right.

It is thought that the contacts from the examiner, as introduced here, is advantageous for applicant.

However, it seems that the examiner attempts to contact an applicant only when the rest of rejection reason is based on a minor inappropriate description and the application would be patentable when the rest of the rejection reason is overcome by further amendment.

It is necessary to recognize that the examiner dose not contact an applicant when the rest of the rejection reason is based on lack of novelty or inventive step of invention.

January 12, 2006