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.

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15 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 ...
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9 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 ...
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57 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 ...
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13 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 Then, Examiner called and verbally asked us to modify the 132 Declaration and cancel the withdrawn ...
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46 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
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21 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 ...
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32 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In non-final office action, how to handle previously withdrawn claims?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 ...
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206 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 ...
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35 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, ...
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184 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 ...
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79 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.
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162 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: “...
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76 views

is there any 3(i) objection under patents act for the respective claim mentioned in body?

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 ...
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29 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. ...
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94 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 ...
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96 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 ...
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433 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: ...
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75 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 ...
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308 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,...
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204 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 ...
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270 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 ...