7
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 or being obvious (compared to China, or for that matter, Japan, the UK, Australia, Canada etc). If your yardstick for rigor is the likelihood of rejection, then ...
7
In general, patents/applications are heavily favored as you noticed. One contributing factor is that the search system (EAST) is the subject of a good amount of examiner training and is actually pretty good since it has a lot of operators that let you really search down to the sentence level. Another factor is that patents somewhat have their own lexicon ...
5
First, the search tools that we examiners have are tuned for searching natural language, not source code, so it's far easier to find natural-language prior art than source code prior art.
And your question assumes that most patent examiners who handle software-related applications are proficient at reading source code. Most of us are not. And there are ...
4
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 "predictable arts". Also, the implementation the inventor describes doesn't need to work particularly well. One way to think about it might be "is there more ...
4
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.
However, the examining corp is organized into Technology Centers. One of them is 2400 that covers "Computer networking, Multiplex communication, Cryptography/...
4
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 manner, which means they have at least checked that specific part of the cited prior art. I've seen them quite reluctant to grant an inventive step which usually ...
3
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 the priority date of its filing. In the U.S., this means that it can be used to show another application is obvious as of the date of its filing even though no ...
3
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. But it depends on the examiner and the interpersonal dynamics. My guess is that you could try asking what claim combinations the examiner thinks have a chance, ...
2
Searching source code for a particular concept is extremely time-consuming, even for well-documented code. Citing it in a rejection is therefore correspondingly rare.
I've cited source code on a couple of occasions when I was fairly certain that the software in question did something in a particular way and digging through the source wasn't too hard. Even ...
2
You are free to retract the Power of Attorney you signed and take over the case but you will need to do that before you send in anything. The USPTO will not deal with you while your attorney is still empowered. Also you can change attorneys. There is no requirement to stick with the practitioner who originally filed.
Writing a patent well is hard for a ...
2
In the US, the AIA amended the rules to allow third parties to submit prior art during prosecution.
MPEP 1134.01 Third Party Submissions Under 37 CFR 1.290 [R-11.2013]
Third parties can submit prior art by the later of:
1) within 6 months of publication of the application; or
2) before the first Office Action.
If for some reason there is a Notice ...
2
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 is usually glossed over. In court it becomes an issue of debate. Each side tries to convince the judge that their view of the level of expertise need to be a ...
2
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 was later confirmed to me in a phone call today with the USPTO.
So, it appears the Accelerated Examination option, when accessed based on the age or medical ...
2
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 live with.
I personally come very often across patents that are ridiculous in light of prior art, or they are even prior art themselves. In those cases, one ...
2
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 sheet (ADS) form PTO/AIA/14 includes a checkbox for making the statement under 37 C.F.R. 1.78, you may still be able to make the statement by filing a corrected/...
2
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 the dependent claims might add enough limitations to achieve patentablity.
I strongly advise to not have that many claims. It might be annoying to the ...
1
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 oversight and confirming that you have now filed the terminal disclaimer
call the examiner, point out that you have done steps 1 and 2, and apologize
All this can ...
1
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 technology.
EDIT to address the concerns of questioner:
Because the standard is a Person (singular) Having Ordinary Skill in the Art (singular), the USPTO chooses the ...
1
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 PHOSITA was described narrowly enough that only a few people on the planet fit the definition -- you just have to argue that it's a highly specialized field, and ...
1
At the depatisnet register. https://register.dpma.de/DPMAregister/Uebersicht?lang=en Search for the patent number then you can find the documents.
1
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 a change of patent laws that causes a need for reexamination), and also the pending application may become abandoned if you fail to timely submit payment of ...
1
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.
1
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 as of the date they are publicly available. In this case, all versions of the application, even canceled claims (and even if some parts of the specification and/...
1
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 application.
Yes, everything disclosed in the published patent is available as prior art.
1
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 would not be skilled in that art.
So it is rather specific.
As another example:
If you make a new mouse trap, then the art is "making traps for animals". If ...
1
To create a prior-art-request, any user can follow the prior art request format and ask the AskPatents community for help finding prior art on a US Patent Application on AskPatents.
Current Prior Art Requests on AskPatents
How to Submit a Prior Art Request
As revised by the America Invents Act (AIA), 35 U.S.C. § 122(e) expands the opportunity for third-...
1
Egyptian Goddess v. Swissa case defines the standard for infringement of a design patent: the point of novelty test should no longer be used in the analysis for determining design patent infringement as it is inconsistent with the "ordinary observer" test to be applied (following Gorham v. White, 81 U.S. 511, 528 (1872)). However, the ordinary observer ...
1
It is hard to say. My observations are you have moved the watch face to an entirely different location and you do not have the prominent winder knob.
1
This application is currently awaiting appeal. It has been rejected and amended/argued a few times and now the applicants have filed an 18 page appeal brief that has been responded to by an equally long examiner's response. There is a very long wait right now for a case to get before the board.
As they sit right now the claims are:
The examiner's reply ...
1
To address the breadth of the question (US only) is slightly more complicated. The AIA provisions are in rule 37 CFR 1.290. There are other rules that relate to this.
The rules are all in a document called the MPEP.
MPEP 2204 Time for Filing Prior Art Citation [R-7]
Citations of prior art may be filed “at any time” under 35 U.S.C. 301. However, ...
Only top voted, non community-wiki answers of a minimum length are eligible
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