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Created page with "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 ac..." |
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Billy Shakespeare wrote a whole lotta sonnets | |||
patent prosecution process: | patent prosecution process: | ||
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1. Application | 1. Application | ||
2. Examination, PTO | 2. Examination, PTO | ||
3. Office Action-revisions needed, not needed | 3. Office Action-revisions needed, not needed | ||
4. Response to Office action | 4. Response to Office action | ||
5. Subsequent Office action | 5. Subsequent Office action | ||
6. Final rejection or allowance | 6. Final rejection or allowance | ||
7. Issues | 7. Issues | ||
CFR- Code of Federal Regulations | CFR- Code of Federal Regulations | ||
Promulgated by PTO-Department of Commerce | Promulgated by PTO-Department of Commerce | ||
37 CFR-Patents, TM, (c) | 37 CFR-Patents, TM, (c) | ||
| Line 19: | Line 32: | ||
1)Specification including claims(35 USC 112) | 1)Specification including claims(35 USC 112) | ||
2)Drawings (35 USC 113) | 2)Drawings (35 USC 113) | ||
3) Oath- you are th eoriginal inventor etc. (37 CFR 1.63, 1.68) | 3) Oath- you are th eoriginal inventor etc. (37 CFR 1.63, 1.68) | ||
4) Fee | 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 | |||
Latest revision as of 16:37, 6 April 2011
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
