Patent Prosecution at the USPTO .

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Patent Prosecution at the USPTO: Tips and Recent Developments
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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 Angeles March 10, 2009

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Overview Examiner\'s perspective of a patent application Tips for recording and indicting a patent application Examination Guidelines in perspective of KSR

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Examining an Application Published in the Federal Register On October 10, 2007 At 72 FR 57526 3

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Preparing the Application Forms Do utilize USPTO frames without modifying the dialect. Try not to utilize a joined affirmation and force of lawyer shape. USPTO structures can be found at: 4

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Preparing the Application Data Sheets Do utilize an Application Data Sheet (ADS), in spite of the fact that an ADS is not required. Clients utilizing an ADS can expect two focal points when applying for a patent:  1.      Improved precision of recording receipts. 2.      Accurately recorded application information. 5

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Preparing the Application Data Sheets (Cont\'d) Use of a supplemental ADS is conceivable despite the fact that no unique ADS was submitted on recording. The accompanying data can be provided on an ADS: Application Information Applicant Information Correspondence Information Representative Information Domestic Priority Information Foreign Priority Information Assignment Information 6

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Preparing the Application Preliminary Amendments In New Applications Avoid submitting Preliminary Amendments on recording A substitute detail will be required if a preparatory alteration show on documenting rolls out improvements to the determination, with the exception of: Changes to title, unique, cases or expansion of advantage claim data to the particular See the notice " Revised Procedure for Preliminary Amendments Presented on Filing of a Patent Application ," 1300 Off. Gaz. Pat. Office 69 (November 8, 2005), accessible at: 7

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Preparing the Application Preliminary Amendments in Continuations and Divisionals Avoid submitting Preliminary Amendments on recording a Continuation or Divisional Avoid Preliminary Amendments that scratch off every one of the cases and include new ones 8

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Filing the Application Select a strategy for documenting the application 1. Quickened Examination 2. EFS-Web 3. Customary Mail Route 9

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Accelerated Examination Change by and by successful August 25, 2006 Opportunity for definite assurance in 12 months Participation requires: Applicants give more noteworthy data in advance – pre-examination seek and quickened examination bolster report record application utilizing electronic indulgence framework consent to meetings predetermined number of cases 10

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Accelerated Examination Statistics As of July \'08: 293 applications permitted all things considered, 182 days to finish arraignment Minimum number of days to finish indictment: 18 193 licenses have issued (8/19/08) 293 applications permitted Participants\' reaction & remarks positive; speedier, as well as amazing 11

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Accelerated Examination Issues Accelerated Examination Common Failings Failure to give the content inquiry rationale. An insignificant posting of terms won\'t suffice. Inability to look the guaranteed innovation. The request of for quickened examination might be rejected if the inquiry is not proportionate in extension with the cases. Inability to show bolster in the determination as well as drawings for every confinement of every case . 12

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Accelerated Examination Issues Accelerated Examination Common Failings (Cont) Failure to show bolster in the detail and additionally drawings for every restriction of every claim for each record of which advantage is asserted. Inability to explicitly distinguish the confinements in every case that are unveiled in every reference. 13

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EFS Web New EFS-Web framework propelled March 2006 permits PDF-based entries supplanted XML-based framework 2005 outcome: 2.2% of utilizations recorded electronically 2006 outcome: 14.3% of uses documented electronically 2007 outcome: almost half of uses documented got through EFS-Web; more than 1,000,000 (aggregate) take after on papers and new applications got third Qtr 2008: 69.8% of uses documented electronically 14

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EFS Web Safe, Simple, Secure Many organizations, law offices, and autonomous creators moving to 100% electronic petitioning for new applications and take after on papers. 15

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EFS Web Issues Avoid coding (distinguishing) a Request for Continued Examination (RCE) as an "Alteration" when recording a RCE Avoid recognizing papers after the underlying documenting as "new" Avoid basic PCT documenting botches Avoid recording shading pictures or pictures that have a determination higher than 300x300 dabs for each inch (dpi) 16

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General Prosecution Advice Proofread claims for clarity and exactness Present every single relevant contention and confirmation before conclusive dismissal If the analyst is accepted to disregard a claim restriction, an individual or telephonic meeting may encourage the indictment to culmination. 17

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General Prosecution Advice Amendments to the cases as well as detail ought to be joined by a composed articulation showing particular support for the change. On the off chance that the support is certain, a clarification is useful. Because of confinement prerequisites, where creations are to be sure patentably ill defined, candidates ought to present contentions keeping that in mind. Perused the whole earlier workmanship reference refered to by the analyst, not only the part depended upon by the inspector in the dismissal. 18

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General Prosecution Advice Don\'t start a reaction on unquestionably the most recent day of the statutory period, if conceivable. Don\'t by and by assault the Examiner in a reaction to Office Action. Take after the levels of leadership for help : First, call the Examiner. On the off chance that he or she is non-responsive or inaccessible, contact the Supervisor. In the event that the issue is still not settled, contact the Technology Center Director. 19

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Patent Prosecution Tips Pre-Appeal Brief Conference Avoid sending the demand isolate from the Notice of Appeal. Abstain from making a demand when there is an extraordinary after-definite change. Abstain from connecting more than five pages to the cover frame. Abstain from sending in a supplemental demand. Abstain from paying a moment Notice of Appeal expense in the application. 20

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Patent Prosecution Tips Consider arraigning an enhanced CIP development autonomously of the earlier innovation: File, if need be, a continuation just to the first creation, or take an interest on the first innovation, and File another application, as opposed to a CIP, for just the new innovation: without an advantage assert (35 U.S.C. §120, 37 CFR § 1.78) to the underlying application, and thusly without shortening the patent term of the underlying innovation if it somehow happened to be incorporated into the CIP application, as any advantage assert in a CIP can\'t ensure the new development. 21

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§ 103 Examination Guidelines in perspective of KSR Guidelines were distributed in the Federal Register on October 10, 2007 at 72 FR 57526; now additionally accessible in MPEP 2141. Rules don\'t constitute substantive administer making, so any disappointment by Office work force to take after these rules is neither appealable nor petitionable.

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KSR Background Technology Procedural History KSR Int\'l Co. v. Teleflex Inc. , 550 U.S. — , 82 USPQ2d 1385 (2007)

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KSR Reaffirms the Graham Analysis for Obviousness "In Graham [], the Court set out a system for applying the statutory dialect of § 103, . . . [T]he variables keep on defining the request that controls. On the off chance that a court, or patent analyst, directs this examination and finishes up the asserted topic was self-evident, the case is invalid under § 103." KSR at 1391.

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Federal Circuit\'s Four Errors The Supreme Court expressed that the Federal Circuit blundered when it connected the notable instructing recommendation inspiration (TSM) test in an excessively inflexible and formalistic way. KSR at 1396-97.

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TSM Remains a Valid Approach to the Graham Inquiries under KSR "When it initially settled the necessity of exhibiting an educating, recommendation, or inspiration to consolidate known components keeping in mind the end goal to demonstrate that the blend is self-evident, the Court of Customs and Patent Appeals caught an accommodating knowledge. . . . There is no important irregularity between the thought basic the TSM test and the Graham analysis." KSR at 1396.

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The Basic Approach to Determining Obviousness Remains the Same An analyst is still required to give a contemplated articulation of dismissal grounded in the Graham request. He or she should explain a reason or method of reasoning to bolster the conspicuousness dismissal. See KSR at 1396 ("To encourage audit, [the obviousness] investigation ought to be made unequivocal,") (refering to In re Kahn , 441 F.3d 977, 988 (Fed. Cir. 2006)).

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KSR Provides a More Expansive View of Prior Art "The conspicuousness investigation can\'t be kept . . . by overemphasis on the significance of distributed articles and the unequivocal substance of issued licenses. . . .

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KSR Provides a More Expansive View of Prior Art . . . In many fields it might be that there is little talk of clear systems or mixes, and it frequently might be the situation that market request, instead of logical writing, will drive plan trends." KSR at 1396.

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Any Reasoned Argument Grounded in Graham May Form the Basis for a Prima Facie Case of Obviousness The TSM test is only one of various substantial justifications that might be utilized while deciding conspicuousness under 35 U.S.C. § 103 . The inapplicability of the TSM test does not really bring about a finish of non-obviousness.

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The Examiner

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