4/6/11 (Robins)

Billy Shakespeare wrote a whole lotta sonnets

patent prosecution process:

Several Parts:

1. Application

2. Examination, PTO

3. Office Action-revisions needed, not needed

4. Response to Office action

5. Subsequent Office action

6. Final rejection or allowance

7. Issues

CFR- Code of Federal Regulations

Promulgated by PTO-Department of Commerce

37 CFR-Patents, TM, (c)

37 CFR 1.51-Application needs:

1)Specification including claims(35 USC 112)

2)Drawings (35 USC 113)

3) Oath- you are th eoriginal inventor etc. (37 CFR 1.63, 1.68)

4) Fee

Examination by PTO

Initial Screening- figure out which group of examiners will examine it.

Examiner-examines applications in order filed with exceptions (age of inventor, national priorities, reissues, ready to issue/final rejection, etc.)

a. Preliminary examination for informalities

Is the application ready to be substantively examined? -eg. appropriate terminology, etc.

3. Examiner does prior art search(37 CFR 1.104)

4. Examiners letter or action (35 USC 132)-Called 'office action' All office actions contain:

   1.ID information, both app and examiner
   2. time limit for response(usually 3 months or 30 days)

5. Initial Office action

   a. first actions not on merit
      eg. application needs restriction or election
   b. on the merit
      1) Rule- 37 CFR 1.105 - must be complete, must raise all grounds for rejection
      2) must indicate all allowable claims
      3) must provide statuatory language as a basis for rejection