Patent Prosecution Training

Basics of Patent Prosecution Process

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Patent Practitioner: A person who stands between an engineer or scientist with the appropriate technical background.

Module C
1. 2. 3. 4. 5. 6. 7. 8. 9. 10. Basics of Patent Prosecution Process Patent Glossary Operational Knowledge for Practicing Patent Law Prior Art Patent Specification Drafting Claim Drafting Advanced Claim Drafting Prosecution of Patent Application Patent Prosecution vs. Patent Litigation Issues Concluding Session
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Patent prosecution
Patent prosecution describes the interaction between an applicant, or their representative, and a patent office with regard to a patent, or an application for a patent. Broadly, patent prosecution can be split into pre-grant prosecution, which involves negotiation with a patent office for the grant of a patent, and post-grant prosecution, which involves issues such as post-grant amendment and opposition. Patent prosecution is distinct from patent litigation, which describes legal action relating to the infringement of patents. http://en.wikipedia.org/wiki/Patent_prosecution
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Patent prosecution
1 Pre-grant prosecution
1.1 Preparation of an application 1.2 Filing an application 1.3 Search and examination 1.4 Deferred examination 1.5 Invention registration 1.6 Appeals 1.7 Abandonment

2 Post grant prosecution

2.1 Opposition 2.2 Reissue, Reexamination and Interference

Inventor
Idea Working Model

Idea Reduced to Practice

Patent Application

Inventor

Describe the invention in words

Patent Application Mail to

Patent Office

Inspection

Specifications Drawings Claims Application Inspection Name &Address of Inventor Inventors Declaration Filling Fee

Serial Number

Application

Folder

Classification

Electrical Mechanical Chemical

Biotechnical

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Search of Prior Art

Patent Examiner

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Claims and Specifications

Claims

Described and Supported

Details in Specifications

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Claims of Patent Application

Patentable Subject Matter

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Claims
Process

Machine An Article of Manufacture Composition of Material

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Invention

Is it NEW?

Has this been done before the APPLICATION?

Are CLAIMS NOVEL in it?

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Invention

Is it OBVIOUS?

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Finer Points
Is the INVENTION as CLAIMED described in the SPECIFICATIONS? Examiner must satisfy himself and determine whether the claims are supported by the specifications?

Is the Specifications adequate to support the claimed invention?

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Claims
Are they CLEAR and DEFINITE? Are they UNDERSTANDABLE?

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FIRST OFFICIAL ACTION

Patent Examiner

Written Opinion under USC section 102, 102, 103, 112

FIRST OFFICIAL ACTION

Inventor
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Review
First Official Action Inventor Amendment

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After Amendment
NOTICE Overcomes All Objections & Rejections Allowed OF ALLOWANCE

Amendment

Examine Does Not Overcome Objections & Rejections FINAL REJECTION

Rejected

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ACCEPTED
Overcomes All Objections & Rejections NOTICE Allowed OF ALLOWANCE

Amendment

Examine

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REJECTED

Amendment

Examine Does Not Overcome Objections & Rejections FINAL REJECTION

Rejected

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After Final Rejection

Review Final Rejection

Final arguments and minor Amendments

AMENDMENT AFTER FINAL REJECTION

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Action: Amendment after Rejection

NOTICE

Satisfied
AMENDMENT AFTER FINAL REJECTION

Allow

OF ALLOWANCE

Examiner considers the AMENDMENT

Not satisfied

Advisory Action

FINAL
REJECTION
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APPEAL!
Examiner was mistaken

Allowed

NOTICE OF ALLOWANCE

Appeal is Filed

Arguments

Examiner was RIGHT

Rejected

REJECTION

STAYS

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FLOW CHART

http://www.techtransfer.iastate.edu/en/for_iowa_state/educational_resources/patents_and_the_patenting_process.cfm

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MPEP
From this presentation, one may be tempted to conclude that patent prosecution is a fairly straight forward affair. In most of the cases, the answer is yes. However, it is worth remembering that the Manual of Patent Examining Procedure (MPEP) is a 3000+ document; and the worst part is that it is not a static document. The laws, rules and forms keep on changing. Even the basic fundamentals change over time to include newer areas like biotechnology.

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Thank You
Good Luck for your journey to Patent Law Practitioner

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