10-the u.s. patent process: filing to disposition

The U.S. Patent Process: Filing to Disposition

Kristine H. JohnsonMacMillan, Sobanski & Todd, LLC

[email protected]

Topics in this presentation

• Managing patent attorney communications

• The patent prosecution process

• Examiner motivations and idiosyncrasies

• Responses to substantive rejections of claims

• Issuance, post issuance notes

First, do no harm to your budget

• A note about patent attorneys

–Patent attorneys charge $200 to $500 / hour in 6 minutes increments

–Assume that every time an attorney touches a document, they will bill at least $50

–But they need you, or at least your money

–And you need them, or at least the results

–It helps to make them beholden to you - be Walmart

–But, don’t make yourself beholden to them - don’t supply Walmart

The key is clear communication and audits

Managing patent attorney communications

• How do you prefer that the attorney communicates with

– The primary contact at the organization?

E-mail Reporting letters File keeping Billing codes, etc.

Time = money (yours)



– The client, the organization Non-infringement (clearance) opinions

◦ Attorney to Attorney

– An inventor, eg. a researcher at the organization Errant patent attorneys sometimes forget

who is “in charge”



– Attorney-contracted service providers (searchers, draftsmen, sequence listing) Confidentiality Conflict of interest

– Others at the law firm Paying for training people Paying for senior reviews



– Examiners at the USPTO• Talking informally with Examiners

– Authorize it, but watch for abuse

• Talking formally with Examiners– Authorize it! Great use of time.

• Writing to Examiners– Set low-ish upper limit on responses ($2,000?), and

ask that the attorney obtains approval to increase when necessary


• How do you prefer that the attorney communicates– Terms of Art

eg. 102, 103, 112, Office action, amendment, etc. Should be able to speak to you without using terms of

art, most of the time

– Deadlines, service fees & government fees Watch out for time extension fees Watch out for multiple dependent claim fees

– Efficient patent prosecution Keep attorney in the loop as far as evolving sense of

licensable scope, as you learn more through licensing activities.


• Audit your attorney time– Every bill– Every item– Ask for clarification of charges– Identify ways to save money– Modify authorizations as appropriate – Create data to show effectiveness of your

communication procedures to your boss!

Typical sequence of patent prosecution events

• File application• Notice to file missing parts• Receive official filing receipt• File assignment• File Information Disclosure Statement• File any preliminary amendments• Receive first office action from PTO• Examiner interview (optional)• Response/Amendment from Applicants• Receive second office action from PTO• Response/Amendment from Applicants

– Declarations– Another interview, possibly

• Receive final office action (or notice of allowance) from PTO• Issue, Abandon, Re-file

Takes at least 2 to 3 years!

Examples of types of office actions

• First action allowance – Too narrow? – No art reviewed?

• Twenty page office actions– What didn’t the examiner understand?

• Broad hand-waving, overlooking facts (common)• Picking apart each element & hindsight reconstruction of

invention (common)• Incoherent writing and logic

– 10% of the cases, in my estimate• Some are factually accurate, leaving only the law at issue.

– These are fun for attys, but expensive (appeals)

Patent Examiners are people, too

• PTO behavior incentives – Bean counting at the PTO

• Underpaid and overworked– Stepping stone or dead end?

• Psychological/philosophical issues – Inflated ego / timidness, disorganized, skeptical of profit

motive, risk averse

• Education issues– Science, law, PTO procedure– English as second language – Compare to European patent examiners


• Examiner background– Citing MPEP vs. case law– Business realities

• Different “issues” in different art units– Biotech and organic chemistry– Software and business methods– Electronics and mechanical


• Limited time to complete examination• Your application is one of many on the

docket• 2 counts per disposal• 1 count for first office action• 1 count for allowance or abandonment• After Final Practice / RCEs• Restriction / Divisional





• Response to substantive rejections of claims


Substantive Patent Rejections

• §101 (utility) rejections are ordinarily not a problem, except for double-patenting

• §102 (novelty) rejections are primarily factual in nature, with facts being the best arguments

• §103 (obviousness) rejections are primarily legal in nature, with facts still being the most persuasive to Examiners, no matter how “right” you are under the law

§ 102(a) Novelty Rejection

• Three part approach:1. Determine the date of the act or

document which is cited as prior art

2. Determine your invention date

3. Prior art date must be before applicant’s invention date and not applicant’s own work


• “Swear behind”– File 37 C.F.R. § 1.131 Declaration (date of

invention before date of prior art)

• Rely on priority– Domestic priority/Provisional– For foreign priority-file certified priority

document and verified English translation


• Prove prior art is not by “another”– File a 37 C.F.R. § 1.132 Declaration

• Argue prior art fails to teach every limitation of the claims

• Amend claims

§102(b) Novelty Rejection

• Consider your earliest U S filing date– Provisional/Domestic priority only

• Argue prior art fails to teach every limitation of the claims

• Amend claims

Cannot swear behind a § 102(b) rejection

§102(b) Novelty Rejection

• Three part approach:

1. Determine the date of the sale/use or document which is cited as prior art

2. Determine the earliest effective U.S. filing date

3. Prior art date must be more than 1 year prior to applicant’s effective U.S. filing date

§ 102(d) Abandonment Rejections

• Avoid them!

– File in the US as soon as possible after filing in the foreign country

– Be aware that the disclosure in the foreign patent, not just the claims, is pertinent

– Claim priority under 35 USC § 119, meeting the statutory timing requirement

§102(e) Patents by Another Rejection

• Argue that the claims are patentably distinguishable from the prior art

• Amend the claims to patentably distinguish over the prior art

• Show that the reference invention is not by "another“– File an affidavit/declaration under 37 C.F.R. § 1.132

• If the reference is not a U.S. patent/U.S. patent application publication claiming the same patentable invention– File an affidavit/declaration under 37 C.F.R. § 1.131 showing

prior invention

§ 102(e) Patents by Another Rejection

• Avoid them!– By perfecting a claim to priority under 35 U.S.C. §

119(a)-(d) within the time period set in 37 C.F.R. § 1.55(a) or filing a grantable petition under 35 C.F.R. § 1.55(c)

– By perfecting benefit under 35 U.S.C. § 119(e) or 120, within the time periods set in 37 C.F.R. § 1.78(a) or filing a grantable petition under 37 C.F.R. § 1.78(a)

§ 102(f) Inventorship Rejection

• Unnamed co-inventor; incorrectly-named inventor

– Patent invalid if inventorship incorrect• May be corrected under 35 U.S.C. § 256• Inventorship cannot be corrected if omission of

inventor was with deceptive intent on the part of the unnamed inventor

§ 103 Obviousness Rejections

• Almost all inventions are the combination of old elements

– Argue any applicable “KSR” (and “Wands”) factors.

• Evaluating the Prior Art– Is there a reason the cited patent should not be counted

against the invention? Non-Analogous Art: Would a “person of ordinary skill” look

to this area of technology? If not, why not? Identify reasons why those in the art would not combine the

cited patents the way the Examiner did.

• Even simple inventions may be non-obvious (Eibel Process Co. vs. Minnesota & Ontario Paper Co., 261 U.S. 45 (1923)

§ 103 Rejections

• Post-KSR, overcome an obviousness challenge by:– Presenting evidence that the cited

reference teach away from the combination, or

– Evidence of secondary considerations such as commercial success, unexpected result, long felt need, or failure of others

§ 112 Written Description Rejections

• Factors to consider when analyzing claims for compliance with the written description requirement:– Actual reduction to practice– Disclosure of drawings or structural chemical

formulas– Sufficient relevant identifying characteristics– Method of making the claimed invention– Level of skill and knowledge in the art– Predictability in the art





• Response to substantive rejections of claims


Notice of allowance, then what?

• Issuance– Patent term restoration– Terminal disclaimers– Pharmaceuticals

• Post issuance– Correction– Reexamination– Litigation

Questions?

Please ask!

Thank you to Ms. Jenna Cogswell at MST who helped prepare these slides!

Contact us at [email protected] or 419.255.5900 for permission to use these slides, or to ask questions. We are happy to let others use these slides, but we would like to know who they helped.

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10-the u.s. patent process: filing to disposition

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