As regular readers of this blog know, I advocate using the USPTO’s Manual of Patent Examining Procedure (MPEP) as primary authority during prosecution. This is by no means a per se rule, however. There are times when I find judicial authority more effective. One situation where judicial decisions have been particularly helpful has been when…
Category: Prosecution Strategy
A Strategy To Speed Up The Prosecution Of Older Cases
The USPTO’s Manual of Patent Examining Procedure (MPEP) includes many interesting but somewhat obscure provisions. One of the more useful examples of these provisions is § 707.02. Section 707.02 of the MPEP essentially imparts “special” status to older cases and cases in which a third Office action has been issued. Special status gives an application…
The Analogous Art Requirement and How to Traverse Obviousness Rejections Based on Non-Analogous Art
INTRODUCTION The provisions of 35 U.S.C. § 103 limit patent protection to claimed subject matter that would have been nonobvious to a “person of ordinary skill” in the claimed field of endeavor at the time of filing. This person of ordinary skill is a hypothetical construct – an ordinarily skilled artisan who is presumed to…
The USPTO’S Newest Pilot Program – The Patents Ombudsman
Have you ever had a question about an application in prosecution but have been unable to find the correct person to assist you? Have you ever been unsuccessful in obtaining assistance from an examiner or Supervisory Patent Examiner? If so, you will want to take note of the USPTO’s new Ombudsman Pilot Program. The Ombudsman…
A Few Ways To Get On The Bad Side Of Your Examiner
It is almost always in an Applicant’s best interest to maintain the best working relationship possible with an Examiner. After all, a happy Examiner is more likely to be a helpful Examiner. Also, despite the high turnover at the USPTO, you may very well be working with an Examiner again. So, staying on an Examiner’s…