5
votes
In practice, which patent rejection reason is the hardest to address and overcome?
From my personal experience it is both 101, when the invention is a computer-implemented invention, and 103 rejections.
The 101 rejections are a nightmare for me because with them it is alleged that ...
- 2,264
3
votes
I decided not respond to the office action and abandon application. What to do next?
There are two separate questions raised in your scenario.
1) In your case, can you resurrect (revive) an abandoned patent application [just by giving power of attorney to another lawyer]?
Normally ...
- 360
3
votes
Does obtaining a timestamp for a description affect future attempts to patent it?
I agree with the answer from @Eric Shain. I would add one nuance. At least in the U.S. there is a derivation proceeding that allows one to challenge an earlier filed application of another on the ...
- 29.9k
3
votes
Can the examiner's use of more than 3 prior art refs in combination be successfully argued as "nonobviousness"?
It is unfortunately common for US examiners to combine 3 or more documents to argue obviousness. I recall once having 6 documents cited in combination (which, predictably, we did not react kindly to). ...
- 6,218
2
votes
Accepted
Does notarizing the document of a description invalidate any future attempt to patent it?
I am not a lawyer, so my answer is quite possibly wrong. That said, I have had documents notarized and in every case, the notary was only verifying that I willingly signed the document and know what I'...
- 11.6k
2
votes
Application rejected at examination stage - How to proceed best?
I'll take a stab at answering this despite the vague language in your question, and the laws coming from an anonymous EU jurisdiction.
The EU under the patent articles does in fact forbid software ...
- 360
2
votes
Accepted
Does obtaining a timestamp for a description affect future attempts to patent it?
Prior to 1995, it was normal practice to get potentially patentable ideas witnessed, signed and dated. This was what we did at my job. This was because in the US the USPTO used to have a first to ...
- 11.6k
2
votes
Use of phrase "teach or disclose" in OA responses
the basic difference between the both lies between content of prior art
Eg. you have developed a product consisting of
1. aaa
2. bbb
3. ccc
4. ddd
Scenario 1: In the above example the prior art ...
- 1,191
2
votes
Regarding legal options after rejection due to "undue search burden"
A restriction requirement is not a rejection. It does require a response selecting among the options presented by the examiner as to which claims the applicant chooses to have examined in the present ...
- 29.9k
2
votes
In practice, which patent rejection reason is the hardest to address and overcome?
This is a somewhat arbitrary question and I think you’ll get different answers from different people, based on their area of expertise.
In order from most to least difficult to argue against, I would ...
- 121
2
votes
Where/how can I find the reason for a rejected patent?
I don't know about other countries, but in the United States if a patent application has been published, you can find all the documents filed in that case by looking on Public PAIR by patent ...
- 143
1
vote
What is the rationale behind inventor-disclosed prior art disqualification
Different locations have different rules. Most of the world requires absolute novelty at the day of application. They have zero grace period. In these counties the rational for absolute novelty is ...
- 29.9k
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 ...
- 29.9k
1
vote
Accepted
Can I answer a 112 rejection of a method claim by making it less specific?
Can I answer a 112 rejection by making it less specific?
Yes, if the claim refers to something specific that is not supported in the specification then amending to a less specific wording that is ...
- 29.9k
1
vote
Accepted
Notice to File Corrected Application Papers
See MPEP section on manner of making amendments.
There is some formality in making amendments. The USPTO provides an example. Among other things they must be signed. If it isn't signed properly it ...
- 29.9k
1
vote
Repeated rejections with new prior art
There is something called "compact prosecution" that encourages examiners to reject on all grounds in the first office action rather than come up with new references as the case proceeds. However, if ...
- 29.9k
1
vote
I decided not respond to the office action and abandon application. What to do next?
There are other good answers, but they focus on some special cases which almost certainly don't apply to you. So, I wanted to clarify a couple of things:
No one--including the inventor, their friend, ...
- 237
1
vote
I decided not respond to the office action and abandon application. What to do next?
Answering an implied question No it can't be reliably revived - the short answer is that you can't truthfully say that it was unintentional. If you do (untruthfully) say that it was unintentional the ...
- 29.9k
1
vote
Does notarizing the document of a description invalidate any future attempt to patent it?
No, notarization is a way to show that your signature is your signature. It has nothing to do with public disclosure. To prevent others from patenting the same idea, from a practical point of view, ...
- 29.9k
1
vote
How much "mere reversal of parts" can an Examiner validly claim constitutes a 103 rejection
Respond with a citation to Ex Parte Brunson (Appeal 2009-012413 in U.S. application serial no. 11/387,179), which stands for the proposition that a per se rule (in this case "reversal of the essential ...
- 360
1
vote
How much "mere reversal of parts" can an Examiner validly claim constitutes a 103 rejection
This may apply in your case. One strong argument against a 103 rejection is that the change required to a prior art item makes the prior art item no longer suitable for its original intended purpose. ...
- 29.9k
1
vote
Rejection in US
The best way to get specific information about a US patent or application is the US Public Pair site. In this case, you get past a CAPTCHA, enter "20100065236", select "document number" and you will ...
- 11.6k
1
vote
Accepted
Final rejection using same references after an unarticulated non-final
I don't have a definitive answer to this, as I've never had occasion to argue it. I hope someone else comes along with a better answer, because it is an interesting point.
The MPEP does provides some ...
- 6,218
Only top scored, non community-wiki answers of a minimum length are eligible
Related Tags
rejection × 20prior-art × 4
patentability × 2
office-action × 2
obviousness × 2
grant × 2
final × 2
oa × 2
software × 1
pre-grant × 1
uspto × 1
usa × 1
claim-construction × 1
european × 1
non-obviousness × 1
legal × 1
rejected × 1 examination × 1
method × 1
examiner × 1
prosecution × 1
research × 1
reexamination × 1
lawyers × 1
methodology × 1