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

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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