4 votes
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How to handle uncooperative examiner

As a pro se inventor, my examiner seems to be taking advantage of my supposed ignorance. False. You are most likely not being singled out because you are a pro se applicant. Examiners are after “...
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  • 1,013
3 votes
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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. ...
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  • 5,827
3 votes
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Examiner ignores inventor's arguments against his owns

First, call the supervisor (SPE). His/her name and number should be listed at the end of each office action. Most likely the SPE will set up an interview with you, the examiner and the SPE. During ...
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  • 511
3 votes
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Non docketing of response to examiner

Your question should not be when will it be forwarded to the examiner but if there is any bureaucratic reason why it might not be considered as a properly submitted responsive document as of the date ...
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  • 25.3k
2 votes

Office Action response on Design patent application

The USPTO MPEP manual explains patent office procedure. This section is titled - 37 CFR 1.121 Manner of making amendments in application. You will need to study this and follow the required ...
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  • 25.3k
2 votes

How would I go about abandoning this patent application?

You need not do anything. It will become abandoned by your failure to reply in time (37 CFR 1.135(a)). Nevertheless, if you want, you can expressly abandon your application by filing a letter to this ...
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  • 7,033
2 votes

What is the strength of the patent, if during re-examination all the independent claims get cancelled and only dependent claims are confirmed?

A claim that survived reexamination is stronger afterwards than it was before. By definition, a claim that was originally dependent is narrower than the original independent claim. After reexamination ...
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2 votes
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Time for submitting Supplemental Response & update 132 declaration

Sounds like the call from the examiner was not a formal action, so there is not formal deadline. If you wait long enough you will get a final action that you do not want so, if it will be more than a ...
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  • 25.3k
2 votes
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Decision on final office action amendment in regards to potential infringements

Under patent infringement doctrine, there can be infringement under doctrine of equivalents or under means plus function language. The latter is invoked when the claim includes functional language. ...
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2 votes
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Does an IDS filed after a non-final election requirement require payment of a fee

No fee is required An action on the merits means an action related to patentablity. It excludes formalities like errors in payments or requests to have drawings improved. From a very quick search of ...
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1 vote

Does adding an Applicant's other patent as prior art to a nonfinal first office action in response to a claim rejection require a reexamination?

The section of the law (102) on prior art says: (2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under ...
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  • 25.3k
1 vote

In non-final office action, how to handle previously withdrawn claims?

Do you want to leave it withdrawn or do you wish to cancel it? Those are two different states and you can chose to leave it withdrawn (easier to bring back after allowance if that is relevant) or ...
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  • 25.3k
1 vote

How can we extract the prosecution history for the reexamination?

To find a reexamination record look up the patent application for the issued patent in Public PAIR. Under the Continuity tab will be a list of child applications (if any) and reexaminations (if any).
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  • 25.3k
1 vote

How to handle a non-final action with only a provisional non-statutory double patenting rejection

It is a practice of Patent office to give a provisional Non-statuary double patent rejection based on continuation of prior granted/ pending application, if the claims are not substantially different ...
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  • 1,299
1 vote
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Limit on number of "Office Actions"/Reasoned Communications at EPO?

As to your second point: https://www.epo.org/law-practice/legal-texts/html/guidelines/e/h_ii_6_2.htm If amended claims are directed to subject-matter which has not been searched because it only ...
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  • 5,827
1 vote

Non docketing of response to examiner

One option is to call to the examiner. Under "Conclusions" of the Office Action you should find examiner's contact number.
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  • 412
1 vote

Reply to office action scope

The specification, and not the original claims limit the available subject matter of amended claims. Therefore, new claims may be submitted as long as (per above) no new matter is introduced.
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  • 11
1 vote
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Can a device claim be amended to a method after an office action?

Yes, claim amendment is allowed during an Office Action as long as the amended claim language fits within the original disclosure and background. The information you are looking for is in MPEP ...
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  • 1,775
1 vote

Are patent term adjustment granted automatically?

I've got almost 200 issued patents and my experience is that the USPTO automatically calculates the patent term adjustment, but it is worth double checking the calculation, making sure they got it ...
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  • 693
1 vote

What does this sentence mean in an Office Action?

Please read http://www.uspto.gov/web/offices/pac/mpep/s809.html (scroll down to the section titled "Present") Also look at http://www.uspto.gov/web/offices/pac/mpep/mpep-9020-appx-r.html#d0e324081 (...
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  • 111
1 vote
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Do I need to sign power of attorney to respond to office action?

Is there database for for patent lawyer customer numbers in US? I don't believe so. Patent practitioners have a registration number which is publicly searchable at the USPTO (as you have found). ...
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  • 7,033

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