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…
Category: Practice Suggestions
The “Art” Of Patent Prosecution Or Don’t Be A Bull In A China Shop
In my opinion, quality patent prosecution can often be as challenging as quality patent application drafting, which is one of the more challenging tasks in the legal profession. The challenge in patent prosecution is not in obtaining allowed claims, but rather in obtaining the broadest claims that have the most value. That is, to convince…
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…
Avoiding Implications By Silence In A Prosecution History – Part 2
This is the second of a two part series about efficient and cost effective ways to avoid potentially critical implications by silence during prosecution of an application. The first part of this series presented techniques for generating a prosecution history that rebuts an implication that additional patentablity arguments were not believed to be available or…
Strategies To Minimize Prosecution Time And Increase Patent Term – Part 2
This is the second of a two part series on maximizing patent value by minimizing prosecution time before the U.S. Patent Office. As in Part I, several strategies to minimize the prosecution time of an application to achieve the earliest possible issue date are presented. File a Nonprovisional Application Instead of a Provisional Application Whenever…