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Tactics for Overcoming Rejections

In: Fundamentals of Patenting and Licensing for Scientists and Engineers

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  • Matthew Y Ma

Abstract

Overcoming rejections in Office actions and filing correspondences are major parts of the prosecution. A common pitfall that is partially due to a lack of participation by inventors is rushing to amend claims in an effort to overcome an Office action rejection. The consequence is a change in the scope of the claims that may adversely affect the exclusive rights of the patent holder and the economic value of the patent. Therefore, amending claims is not simply a legal matter; it is also a business decision. This business decision should be largely based on the attorney's legal analysis of the issue, the inventor's technical insights and the patent owner's business evaluation…

Suggested Citation

  • Matthew Y Ma, 2015. "Tactics for Overcoming Rejections," World Scientific Book Chapters, in: Fundamentals of Patenting and Licensing for Scientists and Engineers, chapter 8, pages 169-199, World Scientific Publishing Co. Pte. Ltd..
    • Handle: RePEc:wsi:wschap:9789814452540_0008
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