Patent examination in the U.S. Patent Office is guided by the principles of compact prosecution, which I discussed in some detail in an earlier post here. Under the principles of compact prosecution, second Office actions are typically final. The finality of second Office actions is addressed in section 706.07(a) the Manual of Patent Examining Procedure…
Category: Prosecution Strategy
New Oath Requirements And Advising Clients About The Duty Of Candor – Redux
The U.S. Patent Office is modifying its approach to oaths/declarations. Starting on June 1, 2008, oaths/declarations must acknowledge “a duty to disclose information material to patentability as defined in Rule 1.56.” This serves as yet another example of the importance of understanding Rule 56, advising applicants/clients of their duty, and how to satisfy this duty….
The Fundamentals Of The Written Description Requirement And Strategies For Responding To Written Description Rejections – Part I
This post is the first of a two-part series on the written description requirement. This first installment discusses the fundamentals of the requirement, relevant law, and the proper standards for compliance. The second installment will provide examples of how to more effectively respond to rejections based on the written description requirement. The Basis for the…
A Case For Citing To The Manual Of Patent Examining Procedure
I recently had a debate with a colleague about whether it is preferable to cite the Manual of Patent Examining Procedure (MPEP) or to court/board decisions in support of a patentability argument. Although this is an open question, in my experience, citing the MPEP has been more effective. Furthermore, almost every practitioner with whom I…
The Benefits Of Efficient Responses And Approaches For Efficiently Responding To Rejections Under 35 U.S.C. §103
There is an old saying that “sometimes, less is more.” This advice has particular applicability to patent prosecution where, with each word written, an Applicant risks generating argument estoppel. Additionally, each written word presents with it an inherent risk of introducing error. Further, extended arguments are generally more expensive since they require additional time to…