Patent Prosecution at the USPTO: Tips and Recent Developments Kathleen Kahler Fonda Legal Advisor,...
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Patent Prosecution at the USPTO:Tips and Recent Developments
Kathleen Kahler Fonda Legal Advisor, Office of Patent Legal Administration
Loyola Law School Los AngelesMarch 10, 2009
Examiner's view of a patent application
Tips for filing and prosecuting a patent application
Examination Guidelines in view of KSR
*Examining an ApplicationPublished in the Federal RegisterOn October 10, 2007At 72 FR 57526
*Preparing the ApplicationFormsDo use USPTO forms without altering the language.Do not use a combined declaration and power of attorney form. USPTO forms can be found at: http://www.uspto.gov/web/forms/index.html
*Preparing the ApplicationApplication Data SheetsDo use an Application Data Sheet (ADS), although an ADS is not required. Customers using an ADS can expect two advantages when applying for a patent:1. Improved accuracy of filing receipts. 2. Accurately recorded application data.
*Preparing the ApplicationApplication Data Sheets (Contd)Use of a supplemental ADS is possible even though no original ADS was submitted on filing.The following information can be supplied on an ADS:Application InformationApplicant InformationCorrespondence InformationRepresentative InformationDomestic Priority InformationForeign Priority InformationAssignment Information
*Preparing the ApplicationPreliminary Amendments In New Applications
Avoid submitting Preliminary Amendments on filing A substitute specification will be required if a preliminary amendment present on filing makes changes to the specification, except for:
Changes to title, abstract, claims or addition of benefit claim information to the specificationSee the notice Revised Procedure for Preliminary Amendments Presented on Filing of a Patent Application, 1300 Off. Gaz. Pat. Office 69 (November 8, 2005), available at: http://www.uspto.gov/web/offices/com/sol/og/2005/week45/patrevs.htm
*Preparing the ApplicationPreliminary Amendments inContinuations and Divisionals
Avoid submitting Preliminary Amendments on filing a Continuation or Divisional
Avoid Preliminary Amendments that cancel all the claims and add new ones
*Filing the ApplicationSelect a method of filing the application
1. Accelerated Examination 2. EFS-Web3. Traditional Mail Route
*Accelerated ExaminationChange in practice effective August 25, 2006Opportunity for final determination in 12 monthsParticipation requires:Applicants provide greater information up front pre-examination search and accelerated examination support document file application using electronic fling systemagree to interviewslimited number of claims
*Accelerated Examination StatisticsAs of July 08:293 applications allowedOn average, 182 days to complete prosecutionMinimum number of days to complete prosecution: 18193 patents have issued (8/19/08)293 applications allowedParticipants response & comments positive; not only faster, but high quality
*Accelerated Examination IssuesAccelerated Examination Common FailingsFailure to provide the text search logic. A mere listing of terms will not suffice.Failure to search the claimed invention. The petition for accelerated examination may be dismissed if the search is not commensurate in scope with the claims.Failure to show support in the specification and/or drawings for each limitation of each claim.
*Accelerated Examination IssuesAccelerated Examination Common Failings (Cont)
Failure to show support in the specification and/or drawings for each limitation of each claim for every document of which benefit is claimed. Failure to specifically identify the limitations in each claim that are disclosed in each reference.
*EFS WebNew EFS-Web system launched March 2006 allows PDF-based submissions replaced XML-based system2005 result: 2.2% of applications filed electronically2006 result: 14.3% of applications filed electronically2007 result: nearly 50% of applications filed received through EFS-Web; over 1,000,000 (total) follow-on papers and new applications received3rd Qtr 2008: 69.8% of applications filed electronically
*EFS WebSafe, Simple, Secure
Many corporations, law firms, and independent inventors moving to 100% electronic filing for new applications and follow-on papers.
*EFS Web IssuesAvoid coding (identifying) a Request for Continued Examination (RCE) as an Amendment when filing an RCEAvoid identifying papers after the initial filing as newAvoid common PCT filing mistakesAvoid filing color images or images that have a resolution higher than 300x300 dots per inch (dpi)
*General Prosecution AdviceProofread claims for clarity and precisionPresent all cogent arguments and evidence before final rejectionIf the examiner is believed to be ignoring a claim limitation, a personal or telephonic interview may facilitate the prosecution to completion.
*General Prosecution AdviceAmendments to the claims and/or specification should be accompanied by a written statement indicating specific support for the change. If the support is implicit, an explanation is beneficial. In response to restriction requirements, where inventions are indeed patentably indistinct, applicants should present arguments to that end.Read the entire prior art reference cited by the examiner, not just the part relied upon by the examiner in the rejection.
*General Prosecution AdviceDont initiate a response on the absolute last day of the statutory period, if possible.Dont personally attack the Examiner in a response to Office Action.Follow the chain of command for assistance: First, call the Examiner. If he or she is non-responsive or unavailable, contact the Supervisor.If the issue is still not resolved, contact the Technology Center Director.
*Patent Prosecution TipsPre-Appeal Brief Conference Avoid sending the request separate from the Notice of Appeal. Avoid making a request when there is an outstanding after-final amendment.Avoid attaching more than five pages to the cover form. Avoid sending in a supplemental request.Avoid paying a second Notice of Appeal fee in the application.
*Patent Prosecution TipsConsider prosecuting an improved CIP invention independently of the prior invention:
File, if need be, a continuation only to the original invention, or take an appeal on the original invention, and
File a new application, rather than a CIP, for only the new invention:without a benefit claim (35 U.S.C. 120, 37 CFR 1.78) to the initial application, andtherefore without shortening the patent term of the initial invention if it were to be included in the CIP application, asany benefit claim in a CIP cannot protect the new invention.
* 103 Examination Guidelinesin view of KSR
Guidelines were published in the Federal Register on October 10, 2007 at 72 FR 57526; now also available in MPEP 2141.
Guidelines do not constitute substantive rule making, so any failure by Office personnel to follow these guidelines is neither appealable nor petitionable.
KSR Int'l Co. v. Teleflex Inc., 550 U.S. , 82 USPQ2d 1385(2007)
*KSR Reaffirms the Graham Analysis for Obviousness "In Graham , the Court set out a framework for applying the statutory language of 103, . . . [T]he factors continue to define the inquiry that controls. If a court, or patent examiner, conducts this analysis and concludes the claimed subject matter was obvious, the claim is invalid under 103." KSR at 1391.
*Federal Circuits Four Errors The Supreme Court stated that the Federal Circuit erred when it applied the well-known teaching-suggestion-motivation (TSM) test in an overly rigid and formalistic way.
KSR at 1396-97.
*TSM Remains a Valid Approach to the Graham Inquiries under KSR "When it first established the requirement of demonstrating a teaching, suggestion, or motivation to combine known elements in order to show that the combination is obvious, the Court of Customs and Patent Appeals captured a helpful insight. . . . There is no necessary inconsistency between the idea underlying the TSM test and the Graham analysis." KSR at 1396.
*The Basic Approach to Determining Obviousness Remains the SameAn examiner is still required to provide a reasoned statement of rejection grounded in the Graham inquiries. He or she must articulate a reason or rationale to support the obviousness rejection.
See KSR at 1396 (To facilitate review, [the obviousness] analysis should be made explicit,) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
*KSR Provides a More Expansive View of Prior Art"The obviousness analysis cannot be confined . . . by overemphasis on the importance of published articles and the explicit content of issued patents. . . .
*KSR Provides a More Expansive View of Prior Art. . . In many fields it may be that there is little discussion of obvious techniques or combinations, and it often may be the case that market demand, rather than scientific literature, will drive design trends." KSR at 1396.
*The TSM test is just one of a number of valid rationales that may be employed when determining obviousness under 35 U.S.C. 103.The inapplicability of the TSM test does not necessarily result in a conclusion of non-obviousness.
Any Reasoned Argument Grounded in Graham May Form the Basis for a Prima Facie Case of Obviousness
*The Examiner as Fact FinderExaminers act as fact finders when resolving the Graham inquiries.
Examiners must articulate findings as to the scope and