This post is a slight departure from previous posts on this blog in that it focuses on communications between prosecutors and clients rather than communications between prosecutors and the U.S. Patent and Trademark Office. The duty of candor that every applicant and patent practitioner owes to the U.S. Patent and Trademark Office (USPTO) has been…
Category: Examples of Responses
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…
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…
Useful Boilerplate Paragraphs
This week’s entry is a presentation of several form paragraphs I often suggest to fellow associates in response to not uncommon circumstances that arise in prosecution. These paragraphs are specific and nuanced and reflect lessons learned in litigation. Requesting the Return of a Form PTO-1449 from an IDS Initially, Applicant respectfully requests the return of…