1. 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

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

3. 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

4. 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

5. 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

6. 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

7. 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

8. 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

9. 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

10. 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

11. 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

12. 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

13. 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

14. 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

15. 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

16. 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

17. 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

18. 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

19. 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

20. 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