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: Practice Suggestions
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 Technique To Assert The Patentable Weight Of A Claim Preamble
Generally, during the examination of an application, an Examiner attempts to rebut the novelty and non-obviousness of a claim by identifying, in the prior art, teachings or suggestions of each feature of that claim. Some claim features, however, may be ignored in this analysis. These features are said not to be entitled to any “patentable…
Comments On And Practical Suggestions For Improved After Final Practice
This post concerns “after final practice,” that is, practice after a final Office Action has been issued in an application. A brief survey of some basics of after final practice follows, along with some suggestions, sample paragraphs, and practice tips for after final practice. Prosecution After Final Rejection is Restricted The most significant aspect of…