The U.S. Patent Office publishes many of its examination guidelines and Examiner training materials on its official website. In my opinion, one of the more useful of these Examiner training materials is an examination guide for rejections under 35 U.S.C. §112 which can be found here. The stated purpose of this training document is to…
Category: Prosecution Strategy
How To Use The U.S. Patent Office’s Policy Of “Compact” Prosecution To Your Advantage
The Policy of “Compact” Prosecution Patent prosecution before the U.S. Patent Office is conducted under a policy of “compact” prosecution. Under this policy, prosecution of an application is generally designed to conclude with the Examiner’s consideration of one response to one non-final Office Action. That is, a second Office Action, responding to an applicant’s reply…
Prosecution Profanity – Words To Avoid In Prosecution – Part 2
This is the second of a two-part series on words/phrases that should be used with extreme caution in patent prosecution before the United States Patent Office. Limitation It is my belief that a prosecution history that avoids use of the term “limitation” when referring to a claim feature is of greater value in litigation than…
Practical Prosecution Advice After KSR
KSR In A Nutshell The Supreme Court’s decision in KSR International. Co. v. Teleflex, Inc., et al., 550 U.S.___(2007) modified an established test for obviousness under 35 U.S.C. § 103. Prior to KSR, Federal Circuit jurisprudence generally required a teaching, suggestion, or motivation to support a combination or modification of cited art (the TSM test)…
Prosecution Profanity – Words To Avoid In Prosecution – Part 1
This is the first of a two-part series on words/phrases that should be used with extreme caution in patent prosecution before the United States Patent Office. I’ve come across a recent series of interesting discussions on the “Anything Under the Sun Made by Man” blog by Russ Krajec. In the series, Mr. Krajec makes a…