Part of the job of a patent examiner is to be skeptical of the claims of would-be patentors and the novelty of their claims. How do you, as an inventor, convince a patent examiner that a patent should be granted for what you’ve submitted? Pam Ancona, Stony Brook chemistry PhD and currently an intellectual property expert for Roche, describes the first time she did battle with a patent examiner, how she won — and why it was so satisfying: “There’s two ways that you can argue with a patent examiner. The way that you get your claims allowed from a patent examiner, you would either do it on legal grounds, purely legal grounds, or you do it based on the science. It was always more satisfying to me, and still is, to have an argument about the science, to educate the examiner about the science. That was how I got the first claim allowed that I got granted…It was always much more satisfying to me to get it granted on the scientific merits more than anything else. I’ve had a bunch of situations like that. It is still fun to me, and I consider myself lucky that I can say that after doing this as long as I have.”
