It is almost always in an Applicant’s best interest to maintain the best working relationship possible with an Examiner.   After all, a happy Examiner is more likely to be a helpful Examiner.  Also, despite the high turnover at the USPTO, you may very well be working with an Examiner again.  So, staying on an Examiner’s “good side” is often good business.

There are many ways to get on the bad side of an Examiner.  Some ways are obvious, while others may not be.  An exhaustive list is impossible because just like every application, every Examiner is different.  Nonetheless, from my many discussions with Examiners over the years, here are five sure-fire ways to get on your Examiner’s bad side.

 The List

#5 - File multiple after final papers. 

Remember - Examiners don’t get production credit for issuing Advisory Actions.

#4 - Present only a general argument with only generic citations to several pieces of art, without an explanation as to how the art supports the argument

Comment – It appears to me that leaving the grunt work to an Examiner is both unfair and a recipe for a poor Office action in response.  Besides, specific citations of evidence tend to make an argument more persuasive.   Also, keep in mind the requirements of 37 CFR 1.111(b):

In order to be entitled to reconsideration or further examination, the applicant or patent owner must reply to the Office action. The reply by the applicant or patent owner must be reduced to a writing which distinctly and specifically points out the supposed errors in the examiner’s action and must reply to every ground of objection and rejection in the prior Office action. The reply must present arguments pointing out the specific distinctions believed to render the claims, including any newly presented claims, patentable over any applied references.

Moreover, general arguments do not help a pre-appeal request for review because an Applicant cannot direct the panel back to the record when that record lacks specificity.

#3 - Submit a needlessly lengthy response inflated with numerous boilerplate paragraphs

Comment - No examiner needs a legal primer on the law of anticipation.  Responses with paragraph after paragraph of boilerplate explanations of §§ 102 and/or 103 tend to lack clarity and can pose a challenge to even the most interested reader.   Examiners are human and their natural inclination is to skip such paragraphs.  This means that they may miss relevant, persuasive arguments, if they are embedded in or near these paragraphs.  This also means that an Applicant is wasting resources writing paragraphs that will not be read by the Examiner. 

Here, I would suggest taking a look at my earlier blog post on this subject.

#2 - Use uncommon terminology when there

are perfectly good and commonly acceptable terms of art

Comment - Under MPEP § 2111.01(IV) an applicant is entitled to be his or her own lexicographer.  But, when an applicant chooses not to characterize an invention in terms that are consistent with commonly used and familiar terminology, he or she potentially impedes the examination of the application.  For example, uncommon terminology makes an Examiner’s searching more difficult (i.e., time consuming).  With limited time to examine an application, why force an Examiner to spend more time on the art search to the potential detriment of the Office action?

#1 - Attempting to bully an Examiner at an interview

With good fortune, you will be working in the patent profession for many years to come.  With some misfortune, you will be back before that Examiner you just tried to bully.  Enough said.

Honorable Mentions

1.  Asserting that a rejection is somehow incorrect/deficient because claim features you just amended or added were not addressed in the rejections and/or are not found in the art.  It seems both illogical and insulting to assert error based on claim features that were not present when the rejection was made.  Instead, consider the following approach:

Without conceding the propriety of the Office’s characterization of the Smith widget, Applicant respectfully submits that Smith cannot teach the widget of claim 1, as presently amended.

2.   Responding to a rejection by adding more claims with different combinations of previously presented limitations just to see if the new claims might be patentable, especially when (1) the original claims are left unchanged and/or (2) the applicant has argued that a rejection is traversed because the previously presented claims define over the cited art.

3.   Reaching an agreement during an interview and then doing something completely different in the next response, without any explanation at all. 

 The Law Office of Michael E. Kondoudis
DC Patent Attorney
www.mekiplaw.com

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The new version of the e-IDS form can be obtained here. Follow this link to the advisory.

The Law Office of Michael E. Kondoudis
DC Patent Attorney
www.mekiplaw.com

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Introduction

Most actions during prosecution of a patent application in the USPTO are eventually subject to quasi-judicial review by an appeal to the Board of Patent Appeals and Interferences.  The classic example of an action that is subject to this type of review is an art (§102 and/or §103) rejection of a claim. 

Other actions, however, are not subject to review by an appeal.  Rather, the only relief available is administrative review.  An example of this type of action is a review of a restriction requirement.  This administrative review is conducted, in part, through petition practice.

Still other actions, such as the revival of an abandoned application, may only be requested by petition.

The Starting Points for Any Petition

The Director of the USPTO has delegated to various USPTO officials the authority to decide certain petitions.  The various delegations are set forth in Chapter 1000 of the MPEP.  

The specific form and content of many common petitions are set forth in the Rules and the MPEP.  For example, the requirements of a petition to revive an abandoned application are set forth in 37 CFR 1.137 and MPEP 711.03(c). 

37 CFR 1.181(b) sets forth the general requirements for the content of a petition.  This Rule, along with section 1000 and any other relevant section(s) of the MPEP, should be primary resources for anyone drafting a petition.

The Requirements

Every petition in the USPTO must satisfy the following 5 requirements:

1.  The petition must be in writing (see 37 CFR 1.2).

Business with the USPTO should almost always be transacted in writing.  Enough said.

2.  The petition must: contain a statement of relevant facts; identify the issue(s) or error(s) presented for review; and state the action or relief sought by the petition.  (see 37 CFR 1.181(b)).

Every petition should be as complete as possible and provide all of the evidence necessary for the rendering of a decision.

3.  The petition must be accompanied by any required fee (see 37 CFR 1.181(d)).

The Office may properly dismiss any petition for lack of or insufficient fee.  Be sure to consult the USPTO’s current fee schedule here.

4.  The petition must be timely filed in compliance with 37 CFR 1.181(f), or as required in a specific statute or regulation.

As a general rule, a petition must be filed within 2 months from the date the action complained of occurred or it may properly be dismissed as untimely.  

5.  The petition must comply with any specific requirements as provided by statute, regulation or USPTO policy.

Review any applicable statute, regulation or USPTO policy relating to the issue being petitioned to determine if there are other requirements specific to that petition.

Final Points

1.  Petitions do not stay periods for reply - The mere filing of a petition will not stay the period for replying to an examiner’s action that may be running against an application or act as a stay of other proceedings. (37 CFR 1.181(f)).

2.  Be sure to separate each distinct subject, inquiry or request into a separate petition - different branches or sections of the USPTO may consider/decide different matters.  Filing separate papers will help to avoid confusion and delay in answering papers dealing with different subjects (see 37 CFR 1.4(c)).

3.  Send the petition to the correct decision maker – a petition should be directed to the USPTO official delegated the authority to decide that petition. (see MPEP Chapter 1000).

4.  The two-month period to file a petition is not extendable. (37 CFR 1.181(f)).

5.  The USPTO provides several fillable pdf petition forms on its website here.

The Law Office of Michael E. Kondoudis
DC Patent Attorney
www.mekiplaw.com

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This post discusses a less common but nonetheless important point that my earlier post on this subject did not – the mechanics of how to claim priority to a foreign patent document, along with a few examples.

Generally, the approach for claiming the benefit of foreign priority is similar to claiming domestic priority. There are a few more requirements to keep in mind, however.

THE RULE AND REQUIREMENTS

The controlling rule here is 37 CFR § 1.55, entitled Claim for Foreign Priority, which states:

An applicant in a nonprovisional application may claim the benefit of the filing date of one or more prior foreign applications under the conditions specified in 35 U.S.C. 119(a) through (d) and (f), 172, and 365(a) and (b).

Section 1.55(a) goes on to impose a non-extendable time limit to make the claim, stating that:

the claim for priority must be presented during the pendency of the application, and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application. This time period is not extendable.

Pursuant to § 1.55, the claim for the benefit of foreign priority must satisfy a few more requirements than a claim for domestic priority. In particular, the claim must identify the foreign application for which priority is claimed by specifying:

          1.  the application number of the priority document;

          2.  the country (or intellectual property authority) with which the priority document was filed

          3.  the day, month, and year the priority document was filed.

Also, of course, the foreign patent authority must have reciprocity with the USPTO, there must be an identity of inventorship, and the U.S. application must almost always have been filed within 12 months from the filing date of the priority document.

A FEW EXAMPLES

This application claims priority under 35 U.S.C. § 119 to German patent application DE 100 21 175.7, filed January 4, 2005, the disclosure of which is incorporated herein by reference.

This application is based on and claims the benefit of priority from Japanese Patent Application No. 5-234567, filed on October 15, 2007, the contents of which are incorporated by reference.

The Law Office of Michael E. Kondoudis
DC Patent Attorney
www.mekiplaw.com

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This post discusses some of the mechanics involved in securing a right of priority to an earlier filed application, provides some examples of acceptable claims of priority, and ways to correct a failure to make the required claim.

BACKGROUND

When certain conditions are satisfied, a patent application is entitled to the benefit of the filing date of an earlier filed application.  These specific conditions are set forth in 35 U.S.C. § 120 and 37 CFR  1.78(a)(1) - (a)(3) for prior nonprovisional applications and 35 U.S.C.  119(e) and 37 CFR  1.78(a)(4) - (a)(6) for provisional applications. 

Generally, the Rules require that an Applicant make a “specific” reference to the prior-filed application in either:

          1.  the specification; or

          2.  an application data sheet (ADS).

The Rules do not articulate any particular form of the required “specific” reference.  They do, however, dictate that the “specific” reference:

          1.  identify the prior-filed application by application number; and

          2.  identify the specific relationship of the applications (i.e., continuation, divisional, or continuation-in-part).

Also, when there is a claim to a chain of applications, the relationship must be stated for each application, to establish the required co-pendency throughout the chain.

EXAMPLES

Example #1 - Benefit Claim to a Nonprovisional Application

CROSS-REFERENCE TO RELATED APPLICATION

This application claims the benefit of U.S. patent application no. 12/123,456, filed December 12, 2007.

Example #2 – Benefit Claim to Nonprovisional Applications

CROSS-REFERENCE TO RELATED APPLICATIONS

This application is a continuation-in-part of Application No. 12/123,456, filed 21 March 2007, and is also a continuation-in-part of Application No. 12/234,567, filed 31 March 2007.

Example #3 - Benefit Claim to Chain of Nonprovisional Applications

If the benefit claim involves a chain of nonprovisional applications, then the specific reference must also include the interrelationships of the applications relative to each other, as a continuation, divisional, or continuation-in-part, to establish co-pendency throughout the entire chain.

CROSS-REFERENCE TO RELATED APPLICATIONS

This application is a continuation of Application No. 12/123,456, filed 21 March 2007, which is a divisional of Application No. 11/123,456, filed 21 March 2006, which is a continuation-in-part of Application No. 10/123,456, filed 1 January 2006.

Benefit Claims to International (PCT) Applications

When the specific reference is to an international application, an Applicant is required to:

         1. Identify the International application by International application number and International filing date (not the § 371(c) compliance date); and

         2. provide any specific interrelationship of multiple applications, when present.

Example #4 - Benefit Claim to a National Stage (§ 371) application

CROSS-REFERENCE TO RELATED APPLICATIONS

This application is a continuation of Application No. 10/123,456, which is the National Stage of International Application No. PCT/US2007/000004, filed January 1, 2007.

Example #5 – Benefit Claim to a Bypass Application

CROSS-REFERENCE TO RELATED APPLICATION

This application is a continuation of International Application No. PCT/US2008/00050, filed January 1, 2008.

Note: do not use the §371(c) compliance date for bypass applications.

Example #6 – Benefit Claim to an International Application (Benefiting From an Earlier Nonprovisional)

CROSS-REFERENCE TO RELATED APPLICATIONS

This application is a continuation of International Application No. PCT/US2008/00050, filed January 1, 2008, which is a continuation of U.S. Application No. 10/123,456, filed February 1, 2006.

Example #7 - Benefit Claim to Provisional Applications

Here again, a specific reference to the prior-filed application is required in the first sentence of the specification or an ADS.  This specific reference need not state the relationship between the nonprovisional application and the provisional application.

CROSS-REFERENCE TO RELATED APPLICATION

This application claims the benefit of U.S. Provisional Application No. 60/123,456, filed March 1, 2008.

THE TIME LIMITS AND CORRECTION

The Rules limit the time in which an Applicant may make a benefit claim.  37 CFR. 1.78(a) requires that any claim of priority must be made before the later of four months from the actual filing date or the date on which the national stage commenced, or sixteen months from the filing date of the prior-filed application.

The Impact of Failure To Make A Timely Benefit Claim

The failure to timely submit the “specific” reference is considered a waiver of any benefit claim.  The failure to make a timely claim is correctable, but this correction can be relatively expensive.  

How Do You Know If A Claim Has Been Correctly Acknowledged by the USPTO?

The Office, via the Official Filing Receipt, notifies Applicants that a benefit claim may not have been recognized or was not accurately recognized.  For this reason, it is important to review every Official Filing Receipt, which is usually provided shortly after the filing of an application so as to provide sufficient opportunity to make/correct a benefit claim within the specified time.

Timely Correction

During the time period set forth in 37 CFR 1.78(a), an Applicant may correct a benefit claim by:

          1. filing a request for corrected filing receipt, and

          2. making the required “specific” reference.

Here, the required “specific: reference can be made either:

           by filing an amendment to the specification or by filing an ADS; or

           by submitting a copy of the amendment or ADS, if the claim was previously submitted.

Note – There is an important departure from standard USPTO practice here.  A preliminary amendment to merely add a claim of priority does not require a substitute specification.  See MPEP 714.01(e).  The Office would prefer that claims are made via an ADS, however.

Untimely Correction

After the time period set forth in 37 CFR 1.78(a), an Applicant may correct a benefit claim by:

          1. filing a petition to accept an unintentionally delayed claim under rule 1.78(a) and the surcharge under rule 1.17(t) (presently 1500.00 USD); and

          2.  making the required specific reference (including the relationship of the non-provisional applications and identification of any intermediate application which directly claims the benefit of the provisional application).

 The Law Office of Michael E. Kondoudis
DC Patent Attorney
www.mekiplaw.com

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In my earlier post in this series, I discussed a few sections of the MPEP that I have found to be useful in some specific circumstances.  This post discusses a few more.

Some Help For When Patentability Arguments Are Ignored

We have all received Office actions in which the Office seems to have ignored patentability arguments.  In these situations, take a look at the following sections of the MPEP:

707.07(f) Answer All Material Traversed
In order to provide a complete application file history and to enhance the clarity of the prosecution history record, an examiner must provide clear explanations of all actions taken by the examiner during prosecution of an application….Where the applicant traverses any rejection, the examiner should, if he or she repeats the rejection, take note of the applicant’s argument and answer the substance of it.

706 Rejection of Claims
After the application has been read and the claimed invention understood, a prior art search for the claimed invention is made. With the results of the prior art search, including any references provided by the applicant, the patent application should be reviewed and analyzed in conjunction with the state of the prior art to determine whether the claims define a useful, novel, nonobvious, and enabled invention that has been clearly described in the specification. The goal of examination is to clearly articulate any rejection early in the prosecution process so that the applicant has the opportunity to provide evidence of patentability and otherwise reply completely at the earliest opportunity. The examiner then reviews all the evidence, including arguments and evidence responsive to any rejection, before issuing the next Office action. Where the examiner determines that information reasonably necessary for the examination should be required from the applicant under 37 CFR  1.105, such a requirement should generally be made either prior to or with the first Office action on the merits and should follow the procedures in MPEP §   704.10 et seq.

*****

(emphasis added).

Some Help When There Appears To Be A Policy of Rejecting All Claims

I have been asked on more than one occasion to offer suggestions on how to respond to Examiners who appear to simply refuse to allow claims.  This happens from time to time in various art groups, for a variety of reasons.  While there is no “silver bullet” so to speak, the MPEP does provide some help.

706 Rejection of Claims

*****
Although this part of the Manual explains the procedure in rejecting claims, the examiner should never overlook the importance of his or her role in allowing claims which properly define the invention.

Some Help For When Office Actions Do Not Apply Cited Art

For any number of reasons, some Office actions fail to apply cited art against the claims, except to say that the cited patent teaches or suggests every feature of the claims.  In these situations, take a look at 37 CFR 1.104(c)(2), which is replicated in § 707 of the MPEP:

707 Examiner’s Letter or Action

*****
(2) In rejecting claims for want of novelty or for obviousness, the examiner must cite the best references at his or her command. When a reference is complex or shows or describes inventions other than that claimed by the applicant, the particular part relied on must be designated as nearly as practicable. The pertinence of each reference, if not apparent, must be clearly explained and each rejected claim specified.

(emphasis added).

Some Help for Pro Se Applications

For all of you inventors out there prosecuting your own cases, keep the following section of the MPEP in mind:

707.07(j)(I) State When Claims Are Allowable

I.    INVENTOR FILED APPLICATIONS
When, during the examination of a pro se application it becomes apparent to the examiner that there is patentable subject matter disclosed in the application, the examiner should draft one or more claims for the applicant and indicate in his or her action that such claims would be allowed if incorporated in the application by amendment.

This practice will expedite prosecution and offer a service to individual inventors not represented by a registered patent attorney or agent. Although this practice may be desirable and is permissible in any case deemed appropriate by the examiner, it will be expected to be applied in all cases where it is apparent that the applicant is unfamiliar with the proper preparation and prosecution of patent applications.

The Law Office of Michael E. Kondoudis
Washington DC Patent Attorney
www.mekiplaw.com

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The proposed changes would be the most significant in more than 30 years. The last revision to the count system was in 1976.

According to the USPTO, the proposals provide the following:

• Improved working conditions:  While the proposal increases the time examiners have overall, it provides incentives to encourage examiners to do a high-quality first action, and shifts resources from a focus on examiner recertification to front-end quality improvements. This change in incentives will ultimately encourage examiners to dispose of applications more quickly.
• More time for examiners:  The proposed changes will give examiners more time overall, more time for a first action on the merits, and time for examiner-initiated interviews, while decreasing credits on requests for continued examination (RCEs)* and providing consistent credits for transferred or inherited amendments.
• Process changes:  These changes will increase work credit certainty for examiners, increase fairness to applicants, and balance the load on IT systems.

The USPTO’s press release on the proposed changes can be found here.

The USPTO’s full proposal can be found here.

The Law Office of Michael E. Kondoudis
DC Patent Attorney
www.mekiplaw.com

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Introduction

USPTO rules require that every non-provisional patent application include an Abstract.  This Abstract is a concise summary of the invention disclosed in the application.  This summary enables the Office (and the public) to quickly determine the nature of the disclosed subject matter.

Although only a summary, it is prudent to draft an Abstract with care. The Abstract is a part of a written disclosure of the application and Federal Courts may properly rely on an Abstract to construe claims.  For this reason, it is beneficial to draft an Abstract at least as broadly as the broadest independent claim.

The many requirements for a patent Abstract are set forth in 37 CFR 1.72(b) and MPEP § 608.01(b). These respective sections of the Rules and the Manual of Patent Examination Procedure should be an Applicant’s primary resources.  The USPTO may properly object to any Abstract that does not satisfy all of the requirements and may require correction by the applicant.  The following are the five most common reasons the Office will object to an Abstract:

1.  The Abstract is not on a separate sheet
A proper Abstract commences on a separate sheet that does not include either other parts of the application or any other material.  Preferably, an Abstract is presented after the claims, which preferably follow the Specification.

2.  The Abstract is too long/too short
A proper Abstract is between 50 and 150 words and does not exceed 15 lines of text.

3.  The Abstract includes improper language
A proper Abstract avoids the legal phraseology commonly found in patent claims, such as “means” and “said.”  Instead, the language used should encompass that which is new and be clear and concise.  Thus, a proper Abstract also avoids phrases that can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc.

Remember - the content of an Abstract should enable a reader, regardless of his or her degree of familiarity with patents, to determine quickly whether there is a need to consult the full patent text.

4.  The Abstract is non-narrative/non-descriptive
A proper Abstract neither discusses purported merits or speculative applications of a disclosed invention nor does it compare the invention with prior art. Rather, a proper Abstract efficiently describes the disclosed subject matter and encompasses what is believed to be novel. Accordingly, extensive mechanical and design details of an apparatus should not be included.

5.  The Abstract is more than one paragraph
A proper Abstract is a single paragraph within the range of 50 to 150 words.

Abstract Drafting Suggestions

1.  An Abstract is part of the written disclosure of an application and can be used to construe (and likely limit) the claims in future litigation.  So, when drafting this portion of an application always keep in mind Miranda – “anything you say can and will be used against you in a court of law.”

2.  A common drafting strategy is to incorporate the language of the broadest independent claim, without the “patentese” (pure claim terminology).  This strategy tends to produce an Abstract that is both adequately broad and that avoids characterizations of the invention.  Moreover, this strategy is efficient because it leverages the care and effort used to draft the independent claim on which the Abstract is based.

3.  When an invention is of a basic nature, the Abstract may be directed to the entire disclosure.

4.  When an invention is an improvement of an old apparatus, process, product, or composition, the Abstract preferably focuses on the improvement.

5.  When an invention is in the nature of compounds and compositions, the abstract preferably sets forth both a process for making and a use of the compound or composition.

6.  Where applicable, an Abstract should include the following:

(1) if the invention is a machine or apparatus, its organization and operation;
(2) if the invention is an article of manufacture, its method of making;
(3) if the invention is a chemical compound, its identity (i.e., the general nature of the compound, e.g., “The compounds are of the class of alkyl benzene sulfonyl ureas”) and use;
(4) if the invention is a mixture, its ingredients; and
(5) if the invention is a process, its operations or steps.

The Law Office of Michael E. Kondoudis
DC Patent Attorney
www.mekiplaw.com

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The Law Office of Michael E. Kondoudis
DC Patent Attorney
www.mekiplaw.com

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Post Bilski, only methods “tied to a particular machine or apparatus” or that “transform a particular article into a different state or thing” remain patent-eligible.  One option to satisfy this “machine-or-transformation test” is to define a method so that it is tied to a device.

An efficient way to accomplish this is to tie a single operation of the claimed method to a device.  And, according to the BPAI, in the case of a computerized method, this may be accomplished merely by reciting the output of a solution from the system.  That’s right.  In Ex Parte Dickerson, a final decision issued by the Board earlier this month, a § 101 rejection of the following claim was reversed:

23. A computerized method for identifying a solution to address exposed performance gaps of a company in a specific industry, comprising:

first identifying a plurality of operational metrics for the specific industry, wherein the operational metrics includes a factor used to measure health or viability of a generic company in the specific industry, wherein the specific industry is a grocery store industry, wherein the operational metrics include at least one of a rate of inventory turnover and a number of customers per day;
assembling a set of solutions for application by the specific industry, wherein the set includes one of a decision, an action, a product, and a service;

assessing impacts of application of the set of solutions on the operational metrics for the specific industry, wherein the assessing includes determining which of the set of solutions has a negative impact on an operational metric and determining which of the set of solutions has a positive impact on the operational metric;

after identifying, assembling, and assessing, then comparing a current operational performance of the company to an operational performance of another company within the specific industry to obtain at least one performance gap, wherein the operational performance includes a performance of a company based upon the operational metric for the specific industry;

identifying a solution based upon the impacts to address the exposed performance gaps, wherein the solution is at least one of a decision, an action, a product, and a service that impacts a problem in a positive manner; and

outputting the solution from the computer system.

The Board’s rationale:

“We find that claims 23, 29 and 30 a computerized method which includes a step of outputting information from a computer (FF 7 and 9-10) and therefore, are tied to a particular machine or apparatus.”

My question to you, the readers of this blog, is could satisfying § 101 be this simple?  And, if not, what other strategies have you found effective?  Please leave a comment if you have a successful strategy to share in a follow up post.

The Law Office of Michael E. Kondoudis
DC Patent Attorney
www.mekiplaw.com

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