I have received numerous comments, both public and private, about my earlier post on avoiding improper final rejections. In that post, I outlined a practice of advising the Office when a next Office action cannot properly be made final because of a deficiency in a current Office action. In reading some of the comments, it…
Examples Of How To Respond To Written Description Rejections – The Fundamentals Of The Written Description Requirement And Strategies For Responding To Written Description Rejections – Part II
This post is the second in a series addressing written description rejections. The following are basic examples of responses to written description rejections that apply some of the principles I discussed in my earlier post on the fundamentals of the written description requirement. Examples 1. The Office Action Fails to Establish a Prima Facie Case…
Improper Final Rejections And Suggestions For Avoiding Them (And Hopefully The Expense Of Having To Request Their Withdrawal)
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…
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…