EB: Patent Prosecution Process: Notes Wednesday, April 6th

From Bill Goodwine's Wiki
Jump to navigationJump to search

Several Steps:

1. Application

2. Examination by PTO

3. Office Action

4. Response to Office Action

5. Subsequent Office Action

6. Final Rejection or Allowance

7. Issued

What is the application?

  • CFR (Code of Federal Regulation); promulgated by PTO, Dept. of Commerce
  • Title 37 CFR - Patents, Trademarks and Copyrights
  • 37 CFR 1.51: An application needs:
    • Specification including claims (35 USC 112)
    • Drawings (35 USC 113)
    • Oath = you are the first inventor, to the best of your knowledge, and you are not committing fraud

Section 112: Describe the invention, and the manner/process of using it; there must be enough detail so that a person of ordinary skill could understand the invention; Must provide the alternative methods of using your patent

Section 113: Gives details of where to put text/number lables etc.

Oath Regulations: Identify inventor and country of origin; Swear that (to the best of your knowledge) you are the first inventor

Examination by PTO:

  • Initial screening - figure out which group of examiners should look at the patent
  • Examiner:
    • (1) applications in the order filed, with exception (inventors over 65 years old get priority; national priority; reissues; application is ready to be issued or rejected)
    • (2) Preliminary examination for informalities - is the application ready to be examined? (e.g. appropriate terminology...)
    • (3) Prior Art Search - 37 CFR 1.104
    • (4) Examiners letter or action - "office actions" - 35 USC 132; all office actions contain identifying information for both application and examiner and a time limit to respond (6 months, unless otherwise specified - typically less, 3 months or 30 days)
    • (5) Initial Office Action
      • First action not on merit (if your application actually involves more than one invention, needs restriction or election)
      • First action on merit: rule 37 CFR 1.105 - examiner must raise all grounds for rejection; examiner must indicate all allowable claims; examiner must provide statutory language as a basis for rejection (e.g. claims 1-5 are rejected under 35 USC 102 as being clearly anticipated by "Smith")