Patent Prosecution (JWB)

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  • Several Parts to the process
    1. Application
    2. Examination by PTO
    3. Office action
    4. Response to office action
    5. Subsequent office actions
    6. Final rejection or allowance
    7. Issues
  • Code of Federal Regulations (CFR)
    • Promulgated by PTO under Department of Commerce
    • Title 37 is patent information
  • 37 CFR 1.51 – General requisites of an application
    • Applications must contain
      1. Specification, including claims, described in 35 USC 112
      2. Oath or declaration described in 37 CFR 1.63 and 1.68
      3. Drawings, described in 35 USC 113
      4. Filing fee, search fee, examination fee, and application size fee
  • 35 USC 111
    • Provisional applications – aren’t examined, just establish priority date
  • 35 USC 112 – specifications
    • The specification shall contain a written description of the invention, and of the

manner and process of making and using it, in such ‘’’full, clear, concise, and exact’’’ terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his


    • Have to do it in a complete way so one ordinarily skilled can make, use and test it
      • Full, clear, concise, and exact specifies all down to articles a/the
        • This can get claims shut down
  • 35 USC 113 – drawings
    • Considered a part of a full description of almost every invention
    • Regulations are very precise
  • 37 USC 1.63 and 1.68 – oath and declaration
    • Must agree that everything within your knowledge has been submitted
  • Examination process at the PTO
    1. Initial screening to determine where to assign patent for examination
    • Examiner procedures
      1. Must examine applications in order filed, with exceptions:
        • Age of inventor (over 65)
        • National priorities
        • Reissues
        • Applications ready to issue or for final rejection
      1. Preliminary examination for informalities
        • Is the application ready to be substantially examined? (appropriate terminology, etc)
      1. Examiner does Prior Art search (37 CFR 1.104)
      2. Examiner’s Letter or Action (“office action” – 35 USC 132)
        • All office actions contain:
          • Indentifying information for both application and examiner
          • Time limit to respond
          • Six months if none specified, usually ~3 months or 30 days
      1. Initial office action
        • First action not on merits
          • eg: application needs restriction because it contains more than one invention
        • On the merits
          • Rule (37 CFR 1.105) – must be complete
            • Must raise all grounds for rejection (with exception of rejections based on amended


          • Must indicate all allowable claims
          • Must provide statutory language as a basis for rejection (“Claims 1-5 rejected un 35 USC