Questions tagged [prosecution]
The process of pursuing getting a patent. Sometimes used to mean every step in that process but sometimes used to mean all of the steps after the initial filing.
23
questions
0
votes
0
answers
15
views
Is there a potential estoppel issue here?
Patent A is granted. Patent application B is related to A, but is a new application. Patent A is prior art to Patent application B. To prosecute Patent application B to grant, can an attorney make a ...
- 111
1
vote
1
answer
71
views
Patent Prosecution - SEQ ID NO
When drafting patent applications, can we skip certain numbers from the SEQ ID NOs? (This is just for convenience, so that I don't have to go back and renumber everything.) for US/PCT/worldwide, ...
- 11
1
vote
2
answers
74
views
Is the language '[a] method as claimed in any preceding claim" only available if a special fee is paid for combinations, variation or permutations?
I have a somewhat vague recollection that you can pay an extra fee that will entitle you to the variations, combinations and/or permutations of the individual claims; if you add a language like that ...
- 326
0
votes
1
answer
36
views
After NFOA, can you amend your independent claim by subject matter in your description although not claimed first without substantial repercussions?
It is a general practice to pull in dependent claims into the independent claim after the first NFOA to make it pass with a narrower scope especially when a dependent claim has already received Notice ...
- 326
1
vote
2
answers
73
views
Can an applicant cite the prosecution record of a patent reference?
I've received a first rejection that cites 2 patents, but only one is a problem as it claims an entire drugstore of possible combinations for treating a likewise enormous number of diseases, but ...
- 217
1
vote
1
answer
16
views
Time for submitting Supplemental Response & update 132 declaration
we previously filed a response to Non-Final Office Action and 132 Declaration with 3-month extension. Then, Examiner called and verbally asked us to modify the 132 Declaration and cancel the withdrawn ...
- 127
2
votes
2
answers
84
views
In practice, which patent rejection reason is the hardest to address and overcome?
I'm referring to:
101: utility (and others)
102: lacking novelty
103: obviousness
- 151
1
vote
1
answer
28
views
Is there any page limit or fee for "Applicant Arguments/Remarks Made in an Amendment"?
I would like to embed images in the "Applicant Arguments/Remarks" to explain myself clearly.
Can I use images (preferably color) in "Applicant Arguments/Remarks"?
Is there any ...
- 373
0
votes
1
answer
63
views
In non-final office action, how to handle previously withdrawn claims?
Assume in a response to examiner's restriction requirement, an applicant elected Claim 1 and withdrew Claim 2 without traverse.
Then in the following non-final office action, what should the ...
- 11
3
votes
2
answers
281
views
How to file After Final response and what can be included in it
Consider the following case:
A nice examiner files final rejection but allows a post rejection interview and during the interview suggests how to amend claims for allowance and also suggests to file ...
- 225
1
vote
1
answer
42
views
How fees are calculated for new claims that replace cancelled claims?
If during response to an office action I cancel a claim and then introduce a new claim in its place then:
Do I have to pay a fee for the new claim or is it covered under a previously paid fees, ...
- 225
1
vote
3
answers
515
views
Can I reclaim the broken line features in Design application drawings during prosecution?
Received a Obviousness rejection on design application from USPTO. The prior arts are quite close to our design, except a pattern on the bottom view. However, the pattern on the bottom view is in ...
- 35
1
vote
2
answers
103
views
How can we extract the prosecution history for the reexamination?
The patent US7405443 has been reexamined but the corresponding office action is missing from the file wrapper as well as global dossier.
- 11
1
vote
1
answer
243
views
Election of species for prosecution
I wonder if anyone can answer this. What the US examiner says appears at first sight ambiguous, but there is perhaps a clue in the reference to 35 U.S.C. 121 (which I looked at).
The examiner says:
“...
1
vote
1
answer
82
views
is there any 3(i) objection under patents act for the respective claim mentioned in body? [closed]
A percutaneous method of treating the heart of a patient in a manner
designed to promote normal sinus rhythm, comprising:
directing an ablation catheter including a distal end percutaneously into the
...
- 11
0
votes
1
answer
35
views
Is there a way to get public pair final/non-final rejection documents in textual form?
I'm looking for easiest way to get textual information from public pair documents, examiner rejection documents to be specific. All the patent prosecution documents it seams are in pdf-image format. ...
- 360
0
votes
1
answer
116
views
Limit on number of "Office Actions"/Reasoned Communications at EPO?
There are two scenarios where I am unsure what the practical limit on the number of "Communications"/objections from an EPO examiner would be. However, I do realize that the annuity fee requirement ...
- 866
0
votes
1
answer
105
views
Examiner Cited Disclosed Art 3 Years After the fact in a 102 Rejection
I have an outstanding patent application that has gone through 5 Office Actions, 9 prior art citations, and one improper final office action withdrawn by the TC Director over the past 3 years. On the ...
- 101
0
votes
1
answer
517
views
Just got an extended European search report with Unity rejection, how can I do to argue with the Examiner?
Just got an extended European search report with Unity rejection, stating that the the application does not meet the requirement of unity according to Article 82 EPC, the reason being as follows:
...
- 35
1
vote
1
answer
105
views
is the indirectly claimed priority valid?
There are:
application A filed Mar.1 2017, claims the priority of application B;
application B filed Feb.1 2017, claims the priority of application C;
application C, filed Jan.1 2017.
However, app A ...
- 35
0
votes
1
answer
393
views
When an element (uncountable noun) is introduced for the first time, is there any introcductory article needed?
As I know, when an element is introduced for the first time, it is generally preceded by an indefinite article ('a' or 'an'). Although some exceptions
exist for “means” and plural recitations. However,...
- 35
3
votes
1
answer
207
views
What exactly is Patent Prosecution Highway (PPH)?
The Wikipedia page on this does not have much information, nor any mention of prosecution. A few questions related to this come to mind:
What is PPH and how does one use/benefit from it?
Who is ...
- 340
3
votes
1
answer
272
views
Are examination and re-examination proceedings publicly available?
Is there any way to read the proceedings of a patent prosecution or a re-examination? Public would be great of course, but so far I have not found even a fee-based resource so I wonder if proceedings ...
- 33