Patent Prosecution (JWB)

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4/6/2011 (Rachel)

  • 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



  • ‘Manual of Patent Examining Procedure’ is handbook for examiners
    • Usually companies own patents filed by employees, which creates odd situation if employee leaves, because handbook requires the name of the inventor and residence of the inventor (could create problems for 1-year bar etc)

How they are examined (Ch 7)

  • examiner searches the prior art (as dictated in Ch 9)
  • Rejection of Claims (706)
    • Examiner gets stack of paper, determines if patent should be granted
    • Whether claims define a useful, novel, nonobvious, and enabled invention that has been clearly described in the specification
    • Goal: clearly articulate any rejection early in the prosecution process so that applicant can make changes
    • If printed publication disclosing invention is found (or other 102 bar):
      • applicant can overcome it by claiming prior art not containing same elements, etc.
      • applicant can also narrow claims, or reword his claims
      • however, cannot add claims (cannot claim more) on rewrite/reissue – ‘new matter’ is not allowed
    • Another entire section of rejection under 103
    • Section 101 bars
      • finds prior art, figures out what it teaches, figures out if invention is disclosed in prior art, figures out if it’s obvious in light of prior art, THEN moves onto statutory bars
    • Section 112
      • “In amended cases, subject matter not disclosed in the original application is sometimes added and a claim is directed thereto. Such a claim is rejected on the ground that it recites elements without the support in the original disclosure under 35 USC 112”
      • Must completely describe all aspects of invention, or you’ll be out of luck