Patent Prosecution Process Notes

Patent Prosecution Process - filing app, responding to office, etc

Several Parts

1. Application

2. Examined by PTO

3. Office Action - response saying if rejected, time to get back

4. Response to Office action

5. Subsequent office actions

6. Final rejection or allowance

7. Issues - start of monopoly

CFR - code of federal regulations

• promulgated by PTO dept. of commerce
• 37 CFR - patents, TM, (c)

Application needs

1. specification including claims (35 USC 112)

2. Drawings

3. Oath (37 CFR 1.63, 1.68)

4.

Examination by PTO:

• Initial Screening
  • figure out which group of examiners examine it

Examiner:

1. Examines applications in order filed, with exceptions

• a. age of inventor
• b. national priorities
• c. reissues
• d. app ready to issue or final rejection
• e. etc

2. Preliminary Examination for Informalities

Is the app ready to be substantively examined?

• eg. appropriate terminology, etc

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