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Patent Prosecution Training

Basics of

Patent Prosecution Process

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?

Patent Practitioner:A person who stands

between an engineer or scientist with the appropriate technical background.

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Module C1. Basics of Patent Prosecution Process2. Patent Glossary3. Operational Knowledge for Practicing

Patent Law4. Prior Art5. Patent Specification Drafting6. Claim Drafting7. Advanced Claim Drafting8. Prosecution of Patent Application9. Patent Prosecution vs. Patent Litigation

Issues10.Concluding Session

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Patent prosecution …

• Patent prosecution describes the interaction between an applicant, or their representative, and a patent office with regard to a patent, or an application for a patent. Broadly, patent prosecution can be split into pre-grant prosecution, which involves negotiation with a patent office for the grant of a patent, and post-grant prosecution, which involves issues such as post-grant amendment and opposition.

• Patent prosecution is distinct from patent litigation, which describes legal action relating to the infringement of patents. http://en.wikipedia.org/wiki/Patent_prosecution

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Patent prosecution• 1 Pre-grant prosecution

– 1.1 Preparation of an application – 1.2 Filing an application – 1.3 Search and examination – 1.4 Deferred examination – 1.5 Invention registration – 1.6 Appeals – 1.7 Abandonment

• 2 Post grant prosecution – 2.1 Opposition – 2.2 Reissue, Reexamination and Interference

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Inventor

Idea Working Model

Idea Reduced to Practice

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Patent Application

Inventor

Describe the invention in words

Patent Application

Patent Office

Mail to

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Inspection

Specifications

Drawings

Claims

Name &Address of Inventor

Inventor’s DeclarationFilling Fee

Application Inspection

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Serial Number

Application

Folder

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Classification

Electrical

Mechanical

Chemical

Biotechnical

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Search of Prior Art

Patent Examiner

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Claims and Specifications

Claims Described and Supported

Details in Specifications

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Claims of Patent Application

Patentable Subject Matter

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Claims

Process

Machine

An Article of ManufactureComposition of Material

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Invention

Is it NEW?

Has this been done before the

APPLICATION?Are CLAIMS NOVEL in it?

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Invention

Is it OBVIOUS?

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Finer Points

Is the INVENTION as CLAIMED described in the SPECIFICATIONS?

Examiner must satisfy himself and determine whether the claims are

supported by the specifications?Is the Specifications adequate to support the

claimed invention?

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Claims

Are they CLEAR and DEFINITE?

Are they UNDERSTANDABL

E?

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FIRST OFFICIAL ACTION

Patent Examin

er

Inventor

Written Opinion under USC section 102, 102, 103, 112

FIRSTOFFICIAL ACTION

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Review

First Official

Action

Amendment Inventor

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After Amendment

Amendment

Overcomes All Objections& Rejections

Does Not Overcome

Objections & Rejections

NOTICE

OF

ALLOWANCE

FINAL

REJECTION

Allowed

Rejected

Examine

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ACCEPTED

Amendment

Overcomes All Objections& Rejections

NOTICE

OF

ALLOWANCE

Allowed

Examine

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REJECTED

Amendment

Does Not Overcome

Objections & Rejections

FINAL

REJECTION

Rejected

Examine

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After Final Rejection

Review Final

Rejection

AMENDMENT

AFTER FINAL

REJECTION

Final arguments and minor Amendments

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Action: Amendment after Rejection

AMENDMENTAFTER FINAL REJECTION

Examiner considers the AMENDMENT

Satisfied

NOTICE

OF

ALLOWANCE

FINAL

REJECTION

Not satisfie

d

Allow

Advisory Action

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APPEAL!

Appeal is Filed

Arguments

Examiner was

mistaken

Allowed

NOTICE OF

ALLOWANCE

Examiner was RIGHT Reject

ed

REJECTION

STAYS

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FLOW CHART

http://www.techtransfer.iastate.edu/en/for_iowa_state/educational_resources/patents_and_the_patenting_process.cfm

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MPEP

From this presentation, one may be tempted to conclude that patent prosecution is a fairly straight forward affair.

In most of the cases, the answer is yes. However, it is worth remembering that the Manual of Patent Examining Procedure (MPEP) is a 3000+ document; and the worst part is that it is not a static document. The laws, rules and forms keep on changing. Even the basic fundamentals change over time to include newer areas like biotechnology.

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Thank You

Good Luck for

your journey to

Patent Law Practitioner