In my earlier post in this series, I discussed a few sections of the MPEP that I have found to be useful in some specific circumstances. This post discusses a few more. Some Help For When Patentability Arguments Are Ignored We have all received Office actions in which the Office seems to have ignored patentability…
Category: Prosecution Strategy
USPTO Joint Labor-Management Task Force Proposes Significant Changes To Examiner Count System
The USPTO has unveiled a series of proposals that would bring significant change to the examiner “count system” – the methodology for determining the time a patent examiner has to complete a patent examination and how much credit is given for each stage of an examination. The proposals were developed by a task force comprised…
Post Bilski Prosecution Strategy – Can It Really Be This Simple?
Post Bilski, only methods “tied to a particular machine or apparatus” or that “transform a particular article into a different state or thing” remain patent-eligible. One option to satisfy this “machine-or-transformation test” is to define a method so that it is tied to a device. An efficient way to accomplish this is to tie a…
Examples Of Responses To Enablement Rejections
Based on the number of requests I have received since my first post on enablement, I know that many of you have been waiting for this follow up. The following are a few examples employing the principles I discussed in my earlier post. A word of caution, as is the case with most technical (non-art)…
A Few Useful Sections Of The Manual Of Patent Examining Procedure
As regular readers of this blog know, I advocate using the USPTO’s Manual of Patent Examining Procedure (MPEP) as primary authority during prosecution. I discussed my reasons for doing so in this earlier post. Basically, it is the USPTO’s official manual, so its instructions to Examiners are beyond dispute. From time to time, when responding…