Patent Prosecution, Tactics for Overcoming Rejections, and Post Patent Granting by Eugene Li Summary of Part 3 – Chapters 8, 9, and 10 Fundamentals of Patenting and Licensing for Scientists and Engineers

Patent Prosecution Most technical evaluation process Typically dealt by attorneys Inventors strongly encouraged to participate and be involved in patent prosecution process

Prosecution History Also called file wrapper or file history Contains all correspondences between USPTO and applicant Perspective licensees/buyers or litigators look for discrepancies in prosecution history, such as Arguments made to overcome rejections Amendments to claims that may reflect weakness of invention in presence of prior art Imperative to maintain a clean history! Think twice before submitting any response to the USPTO

Response to Office Action Inventors should be involved in responding to every single Office Action that is based on technical merits Address examiner arguments that you think are inappropriate Make sure the attorney is not rushing to amend claims to circumvent prior art

Duty of Disclosure What needs to be disclosed? New issued patents, applications, academic papers, product literatures When do you need to disclose? File disclosure statement with patent application or separately within three months from discovering the information

Restriction and Election Requirements If two or more independent inventions are claimed in one application, the examiner may force the applicant to elect one invention for this application Applicant can choose to concur and make election, or make the election but still preserve the right to petition

Conditional Allowances Sometimes, independent claims are rejected but not dependent claims Dependent claim cannot stand on its own Attorney may amend the claim and combine the dependent and its corresponding independent claim together Must consider if this is a practical method to follow

Interview with the Examiner If misunderstandings exist, it is worthwhile to request an interview with the examiner Most interviews are handled by the attorney due to legalese, but inventor must educate and familiarize the attorney with enough technical background Most interviews are 30 minutes or shorter

Rejection Do not panic when the USPTO rejects all your claims Applicant can appeal with the Board of Patent Appeals and Interferences, or allow the case to close and request for a continued examination

Appeal Appeals are expensive. Current fee is $500 to file an appeal Additional costs for filing an appeal brief and requesting a oral hearing Attorney fees may make this a very expensive path

Protest A third party can protest an application that is being reviewed Rules Protest must be submitted within two months of publication of patent application or mailing of a notice, whichever comes first Must include a list of patents, publications, etc relied upon Must include a copy of each item provided and concise explanation of the relevance

Continuation-in-Part Continuation-in-Part (CIP) allows inventors to introduce new matters Often proper to file CIP if new invention depends on a parent application plus incremental improvements Allows for continuity and simpler filing as opposed to filing a separate application

Tactics for Overcoming Rejections Inventors and attorneys must work closely Common pitfall: rushing to amend claims that adversely affect the scope of the original claims

Common Rejections 112 First Paragraph Rejection 102 Rejection Rejected based on written description requirement 102 Rejection Concerns with novelty requirement 103 Rejection Concerns with nonobviousness requirement

112 First Paragraph Rejection Relates to how-to-use aspect of enablement requirement Reasons for failing 112 include: Claims are not useful New matters are considered to have been introduced Any other changes that are not supported by the original specification

Rejection and Prior Art Once a 102 rejection is received, applicant should determine whether the rejection is proper Applicant can attempt to argue that invention was conceived before effective filing date of prior art Otherwise, focus on comparing the merits of your invention to the prior art

103 Rejection 103 Rejection limited to analogous art (difference than 102 rejection), but definition of analogous art is broad Tactics against this rejection: Arguing that obviousness cannot be predicated on what is not known at the time the invention was made Showing that there was no reasonable expectation of success Demonstrating commercial success, failure of others attempting said invention, or copying by others

Admission of Prior Art by Applicant Be careful in handling prior art Once prior art is admitted (intentionally or not), examiner or third party may use this to invalidate the invention anytime during the life of the patent

Possible Issues After Patent Granting Once a patent is issued, the inventor still has many responsibilities to make sure patent remains valid If inventor intends on publishing a paper on the patent, the same caution should be applied to the paper Publication must be consistent when describing a patented technology – any discrepancies can jeopardize the validity of the patent

Possible Issues After Patent Granting Inventor can file a reissue application to Correct any aspect of the patent Expanding the scope of the claims Narrowing the scope of the claims These tactics can be used to make patents as relevant as possible and maximizing the life/validity of the patent