An Applicant Knows More About Their Invention Than An Examiner – USPTO Director Jon Dudas

July 16, 2008

in Prosecution Strategy

The USPTO website has a new story about the inclusion of USPTO Director Jon Dudas in Managing Intellectual Property Magazine’s 2008 “Top 50 Most Influential People in IP.”  Apart from the merits of the story (forgive me, but I think it is self-evident that such a list would necessarily include the Director of the USPTO), I found a quote attributed to Mr. Dudas to be of particular interest.  On the alleged merits of requiring Applicants to undertake an art search and provide the Office with a search report as part of a “quality initiative,” he stated:

the applicant knows more about their invention that [sic] anyone else.

There it is.  The Director of the USPTO has now acknowledged that the balance of knowledge in an application weighs in an Applicant’s favor.  A creative patent prosecutor can envision any number of ways this admission might be usable in proceedings before the USPTO.  Just a thought.

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© 2008, Michael E. Kondoudis

The Law Office of Michael E. Kondoudis
DC Patent Attorney
www.mekiplaw.com

{ 3 comments… read them below or add one }

John Hammond July 17, 2008 at 9:55 am

Well, I see he used the politically correct non-agreement between the possesive adjective and its antecedent. Given the choice between proper grammar and accusations of sexism (and calls for his resignation), it was probably an easy decision. Or maybe this “define your own lexicon” thing extends beyond patent applications.

Lazarus Long July 26, 2008 at 12:09 am

Not that I always I with everything Mr. Dudas says, but does not the essence of his comment make sense? At least when you are talking about the specific invention of the applicant (inventor not the lawyer).

The examiner may or may not know more about the overall “field” of the invention, but for that one specific invention no one will know it better than the person who invented it. That is just basic common sense & does not appear to be any great revelation to me. About the only way it could be taken the way you suggest is really twisting the plain meaning of his statement.

thanks,

LL

mike July 28, 2008 at 7:13 pm

Lazarus,

I think you misunderstand my post. I too agree with what Mr. Dudas said. And, because I agree, I suggest that his statement may be useful during prosecution. MANY Examiners believe that they know more than the Applicant.

As for the alleged “twisting” you allege, I think you may have missed the point of the post and, as a result, your understanding of the “way [I] suggest” is inaccurate. I hope that this helps clarify the post.

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