EB: Patent Prosecution Process: Notes Wednesday, April 6th: Difference between revisions
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Section 113: Gives details of where to put text/number lables etc. | 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") | |||
Latest revision as of 12:36, 6 April 2011
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")
