7
votes
Accepted
Does Chinese Patent Examination Lack Rigor?
By way of preface, this is all opinion. As far as I know, there are no empirical studies on this.
I suspect that a US or EP examiner is much more likely to reject an application for lacking novelty ...
- 7,043
4
votes
Does Chinese Patent Examination Lack Rigor?
I have a slightly different conclusion drawn based on my experience.
I see that chinese examiners are tedious in searching prior art and their objections are almost always described in a detailed ...
- 1,606
4
votes
"Undue experimentation" - why isn't the patent office more demanding to minimise it (e.g. provide parts list)?
The USPTO tries to follow the law and the rules. To show a person skilled in the art how to make and use an invention doesn't mean you need to give them production blueprints - especially in the "...
- 25.6k
4
votes
How do patent offices assure examiners are qualified to examine a patent?
They are all required to have at least a B.S in a science or engineering field but are not necessarily assigned to their specific expertise. Much of the subject matter education is on the job.
...
- 25.6k
3
votes
Is a non-disclosed patent application treated as prior art for a subsequent patent
Until an application is published it is not prior art. It is not accessible by an examiner but even it was it could not be used as prior art.
However, once it is published it can be prior art with ...
- 25.6k
3
votes
Accepted
In the attempt to address claim rejections, how much assistance can I get from the examiner who handled my application?
They certainly don't have to help you, but as far as I know they might. I heard that as an inventor without attorney calling an examiner ans asking nicely for some discussion can lead to good results. ...
- 5,827
2
votes
How specialized is a PHOSITA?
PHOSTIA is a hypothetical person having omniscient knowledge of publications in the field as of the day of filing but ordinary skill.
During examination at the USPTO what level this person might be ...
- 25.6k
2
votes
Does a “Petition to Make Special Based on Age” (65+) type of Accelerated Examination still have the same 3/20 claims limitation?
The short answer is “no,” which is the answer I was hoping for. This was first confirmed in an answer written by a patent attorney (U.S. - CA) responding to my same question posted on quota.com. It ...
- 793
2
votes
Accepted
What happens if a patent has claims that infringes prior art got granted?
The validity of the other patent may be challenged, or, a simpler approach, a license may be obtained. Regarding the insufficient work of an examiner, well... that's unfortunately something we have to ...
- 1,606
2
votes
What if statement about claims with effective filing date on or after March 16, 2013 is not submitted in time
If I understand your question, you have a transitional application for which you did not timely provide the '1.78 statement' required by 37 C.F.R. 1.78 and MPEP 2159.04.
Since the application data ...
- 133
2
votes
Accepted
How patent claims are examined by an examiner?
Any claim that is not either objected to or rejected is inherently accepted so they all need to be dealt with in the first office action. The independent claim might be non-novel or obvious but any of ...
- 25.6k
2
votes
Contact the supervisory patent examiner (SPE)
Normally SPEs do not examine patent applications but are examined by PEs/AEs. PEs/AEs apprise, consult respective SPE and office action intimation are issued as suggested or advised by SPE. Your ...
- 1,202
2
votes
Accepted
Will a request for expedited examination of a CIP force an office action on a languishing parent application?
Making B or C special due to age will not change the course of A at all. If there are a few claims in A that you would really like examined quickly you could include them in an expedited B (if a CIP) ...
- 25.6k
2
votes
Is there a professional cost efficient novelty search?
In the past I got several good searches with KPO as ISA. From the U.S. the cost is still about 1/2 what it would be from the EPO. When I started using Korea they were new and charged even less.
It is ...
- 25.6k
2
votes
Accepted
Is there a professional cost efficient novelty search?
There is no particular office I would say. Some patent offices have examiners more knowledgeable in some topics than others, then some examiners are better than others. You could file the same ...
- 1,932
1
vote
Is it worth it to apply for a preliminary examination in a PCT process?
PCT is an international process. The first search report you receive in a PCT process is an ISR.
If the ISR is favorable (positive or only mentioning small clarity issues), you could just enter into ...
- 305
1
vote
Accepted
Is it worth it to apply for a preliminary examination in a PCT process?
It is used primarily in the case of amendments made after the ISR. If you received a negative ISR and therefore decide to amend claims to increase the chances of patentablity, then going in to Chapter ...
- 25.6k
1
vote
Accepted
Non-provisional patent - Examiner error
It looks like you have not read the responses to your earlier similar question. Incorrect assumptions in the question -
There is no such thing as a "non-provisional patent"
Unpublished ...
- 25.6k
1
vote
Accepted
Contact the supervisory patent examiner (SPE)
From your question it looks like it has come off a queue and been assigned to an art unit. The SPE is the manager of the art unit and has the job to assign the examination to someone in that unit. ...
- 25.6k
1
vote
Accepted
Terminal disclaimer filed after final office action
For anyone else who finds themselves in this situation, the following fixed it for me:
file the terminal disclaimer and pay the fee
submit an A.NE "Response after final action" documenting your ...
1
vote
Examination of applications with matter in more than one art unit/classification?
Yes, examiners just try to do their best. Some practitioners deliberately obfuscate the field of their invention in hopes to get an Examiner that will be more friendly (inexperienced) to the ...
- 166
1
vote
How specialized is a PHOSITA?
Building on what George said -- there will be some argument about this, and it is a good question. But generally, the PHOSITA will be somewhat specific to the field. There have been cases where the ...
- 131
1
vote
Where can I find german patent examination?
At the depatisnet register. https://register.dpma.de/DPMAregister/Uebersicht?lang=en Search for the patent number then you can find the documents.
- 5,827
1
vote
A question on NoA
This means that before the patent has actually issued it is not a patent. The USPTO preserves a right to withdraw it from issue up until it has actually issued (this can for example happen if there is ...
- 226
1
vote
A question on NoA
You still have to pay the issue fee. After that, the USPTO will grant your patent and publish it formally, at which point you'll have your full patent rights.
- 549
1
vote
Canceled claims considered prior art?
Everything in the published patent along with everything in the publicly available file history associated with the application is considered prior art.
Documents are eligible for use as prior art ...
- 31
1
vote
Canceled claims considered prior art?
The figure associated with the canceled claims is in the published patent because the patent was never amended to remove it. There is no requirement to remove material not claimed from a patent ...
- 491
1
vote
How specialized is a PHOSITA?
A person who is familiar with thingumajig and doohickey - the person needs to be familiar with the prior art (as this is the current state of the art), so an engineer, who has never seen a doohickey ...
- 111
1
vote
"Undue experimentation" - why isn't the patent office more demanding to minimise it (e.g. provide parts list)?
Especially in light of the fact that the inventor, if enablement is
taken into account, must be in full possession of the exact recipe for
at least one embodiment.
Not necessarily. An example of the ...
- 389
1
vote
"Undue experimentation" - why isn't the patent office more demanding to minimise it (e.g. provide parts list)?
George White has the key - because it all relates to 'a person skilled (or of ordinary skill) in the art' - the famed and elusive "POSITA."
In other words, a person of ordinary skill in the field of ...
- 228
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